AMR Partnership

PLASMACLUSTER vs PLASMASTER, how will the competition end? ( IP Updates 003/13 )


AMR PARTNERSHIP _ IP UPDATES
AMR_Partnership

PLASMACLUSTER vs PLASMASTER, how will the competition end?

      Two electronic manufacturer giants are currently in dispute at the Commercial Court, each fighting to enforce their trademark rights, respectively.

      SHARP Corporation (SHARP), the legal owner of the registered mark PLASMACLUSTER and a number of its variations were summoned to the Commercial Court on the basis of a cancellation lawsuit, filed by LG Electronic, Inc. (LG) as the owner of trademark PLASMASTER for the same kind of goods in class 11.

      Going back in time, the case actually initiated in 2012, with SHARP filing a report to the Indonesian State Police against LG. The ground of such report was the allegation of trademark infringement, or to be specific, the use of mark, i.c. PLASMASTER without rights, and that is substantially similar to a registered mark (i.c. PLASMACLUSTER) owned by another party (i.c. SHARP Corporation).

      LG, needing to secure its rights to its PLASMASTER trademark then pursued a civil action on June 5, 2013 to the Commercial Court. This procedure was presumably opted by LG. Despite of consequently suspending the trademark application process for the disputed trademark PLASMASTER at the DGIP, the lawsuit would in consequence also suspend the criminal proceeding priory pursued by SHARP to the Indonesian State Police in relation to these trademarks.

      In its lawsuit, LG claimed that PLASMACLUSTER trademark owned by SHARP is descriptive as it refers to a certain technology and process that is widely known and commonly used in Air Conditioning products. While PLASMASTER is an invented word that is unique with no express meaning and indication to the goods sought for protection by the mark.

      Moreover, as the legal owner of the trademarks PLASMA GOLD and PLASMASTER, LG also emphasized the issue of bad faith, where SHARP has attempted to monopolize the use of the word PLASMA through its PLASMACLUSTER trademark registrations and subsequently sought the cancellation of SHARP's 6 (six) trademark registrations for PLASMACLUSTER and its variations (PLASMACLUSTER HD, PLASMACLUSTER ION GENERATOR, PLASMACLUSTER & Device).

      SHARP, unwilling to give up its rights, responded to the lawsuit with valid arguments, claiming the company's legal rights to PLASMACLUSTER trademarks in Indonesia and abroad and firmly countering in particular, the issue of descriptiveness and bad faith.

    Both parties are holding on firmly to their legal stand, however inconsistencies in LG's arguments have left many wondering. If, as claimed by LG, the word "PLASMA" is considered descriptive and therefore should have not been registered as a trademark for electronic goods, how is it possible for LG to obtain trademark registration for PLASMA GOLD and other trademark registrations bearing the word PLASMA in Indonesia?

    Now, while criminal proceeding at the Indonesian State Police has been suspended, the civil proceeding at the Commercial Court remains intense. Disconcerted that issues on descriptiveness and substantial similarities are not always addressed uniformly by the Commercial Court from one case to another, both parties have considered entering into negotiations, hoping that amicable settlement can be more favorable in preserving each of their trademark rights.

    With court decision approaching closely, we shall only wait and see what both parties have resolved between them. They respectively seems to be holding on firmly to their legal standing, but the road to reaching amicable settlement remains open.

    Would the parties in the end prefer an amicable settlement, followed by the concurrent withdrawal of both criminal and civil proceedings? Whatever strategy they have formulated, it is hoped that it can provide a more certain legal protection for each of their interests and also the rights and interests of trademark owners and applicants alike.

    

AMR/ntm/eb