Suzuki cancels bad faith trademarks registered almost 30 years ago

In 2008 Mr. Renus applied for the trademarks SUZUKI TIME ELECTRONICS (design) in classes 9 and 11.

Suzuki Motor Corporation (“Suzuki”) opposed to such applications based on the trademark SUZUKI (design) in classes 7 and 12.

In 2011 Mr. Renus filed a court action against Suzuki seeking that the oppositions be declared groundless. Mr. Renus argued that he was the owner of the trademarks SUZUKI TIME in classes 9 and 14, and SUZUKI TIME ELECTRIC in class 11, which had been used for many years and coexisted with Suzuki’s trademarks. He further argued that the trademarks protect different products and invoked the principle of speciality.

Suzuki replied to the complaint arguing that the trademarks were confusingly similar and filed a counterclaim seeking the cancellation of Mr. Renus’ trademarks on bad faith. They further requested the cease of use of the infringing trademarks. Suzuki argued that its trademark was famous and well-known and that Mr. Renus and his predecessor knew that the trademark belonged to Suzuki.

Mr. Renus replied to the counterclaim and argued that the action was statute-barred since more than 10 years had passed since the trademarks had been registered.

The first instance court accepted Mr. Renus’ arguments and rejected Suzuki’s counterclaim stating that the cancellation action was statute-barred. Also, the court declared that the trademarks were not confusingly similar as the words “time” and “electronics” added distinctiveness and the classes and goods involved were different.
 

Suzuki appealed the first instance’s decision, and the court of appeals reversed it on the following grounds:

• SUZUKI is a well-know trademark that deserves special protection;
• SUZUKI is the mot vedette of Mr. Renus’ trademark and the addition of “time” and “electronics” do not add distinctiveness, which makes them confusingly similar with Suzuki’s trademark;
• Mr. Renus’ application reproduces the design of Suzuki’s trademark;
• the principle of speciality does not apply to this case as consumers may be misled about the origin of the products, causing indirect confusion;
• Mr. Renus and his predecessor (who failed to appear in the proceedings) did not provide any reasonable explanation regarding the choice of SUZUKI to identify their products, so they could not ignore the existence of the well-known trademark SUZUKI;
• the cancellation action is not statute-barred in view of the bad faith and the illicit conduct of the applicant, which is confirmed considering that the trademarks are a slavish copy of Suzuki’s trademark.
   

This decision follows key principles of international treaties as well as landmark decisions from the Argentine Supreme Court and the Federal Court of Appeals regarding trademarks registered in bad faith.

A version of this article first appeared in the INTA Bulletin on August 7, 2024, and is reprinted with the permission of the International Trademark Association (INTA).