Most trademark conflicts, much like any other conflict, result in one of two outcomes for the parties involved – a win or a loss. But there are those, like the recent case in Indonesia between electronics giants LG Electronics Inc. (“LG”) and Sharp Kabushiki Kaisha (“Sharp”), that manage to find an amicable solution to the problem.
The conflict between these two companies began when Sharp filed a police report against LG, alleging that the use of LG’s PLASMASTER mark was an infringement of several of their registered PLASMACLUSTER trademarks, thus initiating a criminal proceeding.
As a tit-for-tat action, LG opted to file a cancellation suit in the Commercial Court to remove Sharp’s trademarks from the Trademark Register. The disputed trademarks are as follows:
- PLASMACLUSTER (reg. no. IDM000228607)
- PLASMACLUSTER ION GENERATOR (reg. no. IDM000264896)
- PLASMACLUSTER HD (reg. no. IDM000258884)
- PLASMACLUSTER (reg no. IDM000320477)
- PLASMACLUSTER ION GENERATOR (reg no. IDM000347235)
- PLASMACLUSTER (reg no. IDM000320521)
In its cancellation suit, LG claimed that they had previously filed to register the PLASMA GOLD and PLASMASTER trademarks in countries such as Australia, South Korea, South Africa, Mexico, UAE, Turkey, Hong Kong, Iran and Israel, but not Indonesia. Based on these previous registrations, LG believes the registration of the PLASMACLUSTER trademarks by Sharp in Indonesia were filed in bad faith, since the trademarks used a descriptive word that defines a technology commonly used in air conditioning industry, namely plasma, (a strange argument, seeing that LG’s PLASMA GOLD and PLASMASTER trademarks also contain the word “Plasma”).
Facing the cancelation law suit filed by LG, Sharp denied that their PLASMACLUSTER trademarks were filed in bad faith and retaliated by claiming that LG imitated the PLASMACLUSTER trademark, deleting the letters “CLU” from PLASMACLUSTER to create PLASMASTER.
Realising that the case was getting increasingly complicated, not to mention costly and time-consuming, both parties decided to enter into negotiations. Considering that both companies are publicly known, and their consumers – being savvy and of a particular socioeconomic status – would be discerning when it comes to selecting electronic goods and would thus be able to differentiate between both brands clearly and easily, it did not seem sensible to prolong the situation.
LG and Sharp agreed to settle the dispute out of court. Both parties agreed to cancel the lawsuit, with Sharp also agreeing to withdraw the police report. LG and Sharp would both thus be allowed to use their respective trademarks on their air conditioning products.
What we can learn from this case is that not every confrontation needs to be solved at the court or through police intervention. Sometimes a negotiation to reach a win-win solution is the best way.
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