Zuykov & Partners - Russia
Dunham Investment Inc has been the owner of the SUZUKI trademark for products in Nice Classes 7 and 11 since 2006. It has been operating in the field of consumer products for more than a decade, particularly in the household appliances industry, in which it is considered to be a reliable middle price-range seller.
In 2017 Suzuki Motor Corporation, which specialises in the manufacture of automobiles and is the owner of the SUZUKI mark for products in Class 12, filed an application to register a trademark for an expanded list of items, which included products in Classes 7 and 11. Dunham Investment’s marks were therefore an obstacle.
Suzuki Motor Corporation has attempted multiple times to invalidate Dunham Investment’s mark. In 2017 it disputed the mark on the grounds that it was registered by a non-existent person. It claimed that when Dunham Investment filed the application to register the mark, the address given was not the registration address of the company in the British Virgin Islands, but rather the address of the leased premises in another state.
Suzuki Motors filed an objection before the IP Court against reviewing the application on the grounds that the Federal Service for Intellectual Property of the Russian Federation (Rospatent) had been critical about some of the evidence submitted. On reconsideration, Rospatent – having established the legal status of Dunham Investment – recognised the registration of the SUZUKI mark as lawful. However, it did so without taking into account the evidence of which the IP Court had been critical.
In December 2019 the IP Court confirmed Rospatent’s decision in Case SIP-595/2019. It stated that there were proofs that the rights holder was a legal entity registered in accordance with the legislation of the country of origin. This was further established by other factual circumstances, which were brought before the court in other cases. In particular, in Case SIP-295/2017, the IP Court agreed that the trademark was used for products in Classes 7 and 11. Suzuki Motor Corporation’s application for early termination of SUZUKI was therefore dismissed. The same happened in Case SIP-785/2018. Overall, Rospatent’s decision upholds Dunham Investment Inc rights to its mark.