By ESA Administrator
29th June 2018
June 2018 ISA Press Release - Ownership of the Suzuki Trademark
The International Suzuki Association has noted an announcement posted on the website of the German Suzuki Association (DSG), an organization that is not a part of ISA or authorized to use the SUZUKI name, asserting that ISA’s claim of ownership of the mark SUZUKI is untrue. DSG bases that claim on a decision in a “Supreme Court Judgment” dated November 12, 2014. DSG’s posting is wrong in its conclusion and misrepresents the facts.
First, the decision referred to is not by a court, much less a “Supreme Court”. It was an administrative decision made in connection with a trademark application filed in the EU by Dunham Industries for the mark SUZUKI on various kinds of goods and services in the trademark goods and services Classes 9, 16, and 41. The EU refused registration of Dunham’s application in view of ISA’s pre-existing EU trademark Registration No. 3,969,342 for the mark SUZUKI in those classes because certain of the goods were broadly claimed and overlapped and ISA’s registration had priority of use.
Dunham asked the administrative body to cancel ISA’s registration based on alleged non-use of the mark on all its listed goods and services.
The original goods and services listed in ISA’s registration were: Class 9: Musical recordings; musical audio-visual recordings; computer programs relating to music; educational computer programs; downloadable musical recordings; electronic publications;
Class 16: Printed publications; books, magazines, periodicals, manuals and catalogues; printed music; sheet music; musical scores; paper, pads and books for musical notations;
Class 41: Musical, educational and instructional services; tutorials, courses, seminars and lessons relating to music; musical entertainment services; music publishing services.
ISA presented evidence to the administrative body concerning its use of the mark on goods and services.
The administrative body found that ISA established use of its mark, whether in stylized or block letter form, for many of the goods and services in its registration, but not all. It held that “Significant and conclusive parts of the evidence, such as the printouts from the different Amazon websites contain valuable information on the use of the mark during the period 2008 to 2012, … . Other elements of the evidence are undated, but still contain conclusive data from the relevant time period, such as the list of Suzuki Voice Program workshops, conferences and conventions organized between 1987 and 2012, and thus have to be taken into account and properly assessed. …”
The administrative body also held that “The evidence shows that the CTM proprietor [ISA] has been active all over the European Union either directly or through its affiliate organizations. Certified and trained teachers can be found in most Member States of the European Union, conferences have been held in many Member States as well, and Amazon sells the CTM proprietor’s products at least in Germany, France, Italy and the UK. …”
“Nature of use requires, inter alia, that the contested CTM is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers. The applicant [Dunham] has not contested this aspect, and in the Cancellation Division’s opinion use as a trade mark [by ISA] derives clearly from all evidence submitted.”
The above statement plainly acknowledges that ISA proved use and ownership of the mark for its goods and services and the administrative body recognized it as a trademark.
The administrative body found that ISA had not used its mark on:
Class 9: Musical audio-visual recordings; computer programs relating to music; educational computer programs; downloadable musical recordings; electronic publications;
Class 16: Printed publications; books, magazines, periodicals, manuals and catalogues; paper, pads and books for musical notations;
Class 41: Musical, educational and instructional services.
But did find ISA used SUZUKI as a mark on:
Class 9: Musical recordings;
Class 16: Printed music; sheet music; musical scores;
Class 41: Tutorials, courses, seminars and lessons relating to music; musical entertainment services; music publishing services.
As a result the administrative body held that ISA’s Community trademark SUZUKI remains registered for all those remaining goods and services.
Furthermore, the ISA registration at issue in the Dunham cancellation proceeding used the mark SUZUKI printed in a stylized form with the “wheel” logo. Subsequent to the above-noted decision the EU issued ISA another registration for SUZUKI, No. 013879549, in block letters for the same goods.
ISA also continues to own registrations for SUZUKI and other SUZUKI marks throughout the world, including Germany.
Anyone seeking information about such registrations may contact ISA.
Accordingly DSG has simply distorted the facts of the Dunham decision it touts and falsely suggests ISA’s trademark was revoked in its entirety. It fails to inform the public that the registration it refers to (and scores more around the world) remains in effect for ISA’s specific activities.