July 26, 2016
Hayabusa is a falcon bird that is indigenous to Japan. While it is not the biggest bird, it is considered the strongest, with an ability to reach speeds of over 300 kilometers per hour. It is from this characteristic that famed Japanese motorcycle manufacturer Suzuki was inspired to engineer a new motorcycle design, which came to be known as HAYABUSA. In 1999, Suzuki’s “HAYABUSA” motorcycle was recognized as one of the best super bikes around.
As a result of the fame of Suzuki’s mark, a local company (“Respondent”) obtained registration for the design mark using the word “HAYABUSA” for use on “car and motorcycle parts and accessories, namely, rear seats, axle extension, chain, handle grip, chainsets, sprocket” under Class 12 back in September 2013. Immediately thereafter, Suzuki filed its trademark application for “HAYABUSA” also in Class 12, which was blocked by the previous registration for the HAYABUSA design mark. Suzuki then filed a Petition for Cancellation against the registered HAYABUSA design mark. The Petition alleged that the registration is identical, similar or closely related to Suzuki’s goods such that it will cause confusion, mistake and deception upon the consuming public as to the true origin of the parties’ respective goods and businesses. It also alleged that Suzuki is the true owner of the “HAYABUSA” mark, which it claimed to be a well-known trademark, and that the registration of the HAYABUSA design mark was made in bad faith. Suzuki submitted evidence of use of the HAYABUSA mark, advertising, promotional materials, and registrations obtained in other countries around the world. In its Answer, the Respondent alleged that there is no likelihood of confusion between the parties’ marks and that the HAYABUSA mark does not qualify as an internationally well-known mark, especially within the so-called relevant sector of the public.
Upon reviewing the Position Papers submitted by both parties, the Bureau of Legal Affairs issued a decision in favor of Suzuki and cancelled the trademark registration for the HAYABUSA design mark. The Bureau explained that there is no doubt that the registered mark is similar to Suzuki’s mark. Furthermore, the Bureau emphasized that while Suzuki’s application for “HAYABUSA” was dated after the registration of the HAYABUSA design mark, Suzuki was still able to prove that it is the real owner, prior adopter and user of the HAYABUSA mark based on its home registration in Japan dating back to December 1989 or 24 years earlier than Respondent’s use or adoption of its mark. In view of this evidence, the Bureau continued that such unexplained use by Respondent of a similar mark lends itself to suspicion of fraudulent motive to trade upon Suzuki’s goodwill and reputation. Indeed, the Bureau surmised that out of the boundless choice of words, phrases and symbols available as a trademark, there is no reasonable explanation in choosing a mark that is nearly identical to another’s mark. Finally, the Bureau explained that Respondent is involved in the business of selling/retailing car and motorcycle parts and accessories, which is similar and/or related to Suzuki’s industry. Thus, Respondent’s use and registration of the HAYABUSA design mark, which is identical to the way Suzuki has used its mark on its promotional materials bolsters the fact that Respondent adopted the identical trademark of Suzuki in bad faith and with the intent to ride on the goodwill and reputation of Suzuki. Accordingly, the Bureau granted the Petition to Cancel. As of the date of this writing, the Respondent’s appeal period has not expired.
This case is interesting for two reasons. First, the Bureau easily found bad faith on the part of Respondent based on the fact that the registered HAYABUSA design mark is identical to the way Suzuki used its HAYABUSA mark in its promotional materials. Second, this case is noteworthy for the way the Bureau analyzed the similarity of the marks, when one is a design mark, while the other is a word mark. Here, Respondent’s mark is a design mark which contains Japanese characters and the word HAYABUSA, while Suzuki’s mark is the word HAYABUSA. The Bureau explained that despite the addition of the designs, what sticks to the mind of the consumer is the word and not the device or other illustrations included in a mark. Thus, the Bureau found similarity between the parties’ marks.