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

26 October 2020
#Company News

Suzuki Trademark Litigation Is Ongoing

For many years, Zuykov and Partners law offices protect intellectual property by Dunham Investments Inc. and Technika GmbH, which take turns in owning the Suzuki trademark.

The designation was registered in 2006 for the appropriation of goods grouped according to classes 07 and 11 of the Nice Classification (household appliances). Subsequently, the visual identity became the subject of a conflict with Suzuki Motor Corporation who planned to register the object for the same classes, according to Nice Classification as the trademark Dunham Investments Inc., which became the property by Technika GmbH as part of the expansion of its business.

Suzuki Motor Corporation decided to cancel the trademark registration. Starting from 2017, representatives of Suzuki Motor Corporation filed an opposition with Rospatent and a number of lawsuits to the court. Over that period of time, the dispute passed through the following stages:

  • Consideration of oppositions to granting the defense of a right to trademarks by Rospatent. As a result, the claims by Suzuki Motor Corporation were denied.
  • Challenging the decision of the patent office to the Court for Intellectual Property Rights. The defense of right of Dunham Investments Inc. trademark was terminated for a number of 07 class goods of the Nice Classification. The rest of the defense of right to trademark was retained.
  • Appeal in cassation: Suzuki Motor Corporation did not comply with the adopted decisions, and its representatives appealed in cassation. In its judgement, the Court for Intellectual Property Rights considered that the specialists of the patent office did not take into account all the circumstances of importance for the case and forwarded oppositions with Rospatent for reconsideration.
  • Reconsideration of the oppositions in Rospatent. By that time, the defense of a right to the Suzuki trademarks was terminated on the basis of an application of Dunham Investment. Inc. In this connection, Rospatent has decided to terminate the proceedings. In respect of the trademark, which was still in force, the opposition was reconsidered and the claims were rejected.
  • Suzuki Motor Corporation again took legal action, challenging the decision of the patent office and asked to cancel the adopted judgement. In 2019, the Court for Intellectual Property Rights considered the received statement of claim and upheld the decision of Rospatent.
  • Suzuki Motor Corporation appealed in cassation. In April 2020, following the results of the proceedings, the Court forwarded the case for a new consideration to the Court for Intellectual Property Rights as a court of first instance.

The case was considered in September 2020, and it is worth noting that during the proceedings, the reasons for considering the dispute also changed. Thus, if initially Suzuki Motor Corporation filed a lawsuit challenging the actions of Rospatent and demanding to terminate the trademark, the court of cassation sent the case for a new hearing because the previous court did not assess the degree of integrity of the actions of Dunham Investments Inc.

In this regard, the Court for Intellectual Property Rights noted that in order to determine the integrity of the trademark owner: “...both the circumstances related to the acquisition of the exclusive right and the subsequent behavior of the owner confirming the purpose of such acquisition are subject to examination. Herewith, dishonesty of the right holder shall be established first of all at the stage of filing an application for registration of the designation as a trademark, since it is at this moment that the intention to compete unfairly with other market participants through the use of the exclusive right to trademark, which provides for prohibition to other persons to use identical or similar designations for individualization of goods and services. When it comes to subsequent behavior of the right holder, it may only confirm or deny the fact that he acted in bad faith when acquiring the exclusive right to trademark”.

Having investigated the trademark owner's behavior and information available in the case materials, the Court for Intellectual Property Rights concluded that the actions of Dunham Investments Inc. and Technika GmbH were in good faith, so the Rospatent decision was upheld and the defendant’s right to trademark was confirmed.


More details of the foregoing trials are available here:

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