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The lawyers of Zuykov and Partners defended the interests of the right holder of the Suzuki trademark, which the household appliances have been being labeled with during the decades

Dec. 30, 2019

Dunham Investment Inc. has been the right holder of the Suzuki trademarks in respect of the products of the 07th and 11th classes of the ICGS since 2006. The company has been operating in respect of the consumer products during more than a decade, in particular, the household appliances. In particular, the air conditioners Suzuki have found their buyer and they have proved themselves to be the reliable household appliances of the middle price segment at the market.

In 2017, Suzuki Motor Corporation, specializing primarily in the manufacture of automobiles and which is the right holder of the Suzuki trademark in respect of the products of the 12th class of the ICGS, filed an application for the registration of a trademark in respect of an expanded list of the products, which included the products of the 07th and 11th classes of the ICGS. The trademarks registered in the name of Dunham Investment Inc. served an obstacle to the registration. Just since that moment, Suzuki Motor Corporation has been trying in every possible way to dispute the trademarks of Dunham Investment Inc.

One of the disputes is the case on the recognition of the legal protection of the Suzuki trademark as invalid on the grounds that the trademark has been registered in a non-existent person. The grounds for filing the objection were the fact that when filing the application, the applicant's address had been indicated not as the registration address of the company in the British Virgin Islands, but as the address of the leased premises located in another state.

This case has some background; the objection was filed back in 2017. The lawfulness of the registration was established by Rospatent; however, the Intellectual Property Court filed an objection against reviewing. The grounds for that were that Rospatent had been critical regarding some of the proofs.

Upon the reconsideration, Rospatent, having established the legal status of Dunham Investment Inc., in the name of which the trademark had been registered, recognized the registration of the Suzuki trademark as lawful. At the same time, that conclusion was made without taking into account the proofs, to which the Court had been critical.

In December 2019, the Intellectual Property Court confirmed the lawfulness of the decision of Rospatent. In case No. SIP-595/2019, the Court stated that there were the proofs in the case that the company-right holder was a legal entity registered in accordance with the legislation of the country of origin. Also, the legal capacity of the legal entity is indicated by other factual circumstances established by the Court in other cases. In particular, in case No. SIP-295/2017, the Intellectual Property Court agreed that the trademark was used in respect of the products of the 07th, 11th classes of the ICGS, and due to that fact the application of Suzuki Motor Corporation for an early termination of the legal protection of the Suzuki trademark was dismissed in this part.

In addition, in case No. SIP-785/2018, the important circumstances were established, in particular, the Court upheld the approval by the General Director of Dunham Investment Inc. of the actions in respect of the registration of the disputed trademark.

The lawyers of Zuykov and Partners defended the interests of both Dunham Investment Inc. and Technika GmbH being the new right holder of the Suzuki trademark. The Intellectual Property Court dismissed the application of Suzuki Motor Corporation in case No. SIP-595/2019. The decision of Rospatent remained in force, so that the legal protection of the trademark of the principal of Zuykov and Partners continues to be valid.

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Author of article

Sergey Zuykov

Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney