Registration of a trademark carries with it certain advantages that can greatly assist a party when enforcing its rights and is typically recommended. However, as highlighted in a recent appeal to the Federal Court of a decision of the Registrar of Trademarks, the broad rights conferred upon a registered trademark are equally beneficial in opposition proceedings, in particular, to prevent a third party from registering a confusing trademark. Hayabusa Fightwear, a Canadian company specializing in mixed martial arts fightgear and fightwear, was successfully represented by François Guay of the Montreal office of Smart & Biggar in this case.
Hayabusa Fightwear v Suzuki Motor Corporation
In Hayabusa Fightwear Inc v Suzuki Motor Corporation, 2014 FC 784, Hayabusa Fightwear sought to register its house brand HAYABUSA in association with, inter alia, various casual clothing articles such as t-shirts, polo shirts, shorts, sweatshirts and sandals.
Suzuki Motor, the well-known automobile and motorcycle manufacturer, opposed the application on the basis of, inter alia, confusion with its identical trademark HAYABUSA, registered and used in association with motorcycles and fittings thereof, and used in association with caps, all of which were only available in Suzuki Motor’s authorized dealerships.
In refusing the application, the Registrar of Trademarks (the “Registrar”) concluded that while Hayabusa Fightwear’s casual clothing articles differed from the motorcycles and fittings of Suzuki Motor, the probabilities of confusion were evenly balanced between a finding of confusion and of non-confusion when considering the applicant’s casual clothing and the opponent’s caps. It is to note that aside from the transcript of the cross-examination of Suzuki Motor’s affiant, Hayabusa Fightwear did not file any evidence before the Registrar.
In setting aside the Registrar’s decision, the Federal Court stressed that Suzuki Motor’s HAYABUSA trademark was registered for use in association with motorcycles and fittings, but not in relation to caps, and noted that when considering the issue of confusion, the approach to be taken will significantly differ depending on whether the comparison is made with a registered or unregistered trademark. In this regard, when dealing with a registered trademark, one must consider the entire scope of rights granted under the registration and its potential use must be considered as well as its actual use. In contrast, when comparing an opposed mark with an unregistered trademark, the comparison will be much narrower since it will be restricted to the actual use of the trademark of the opponent. Thus, it was imperative for the Court to consider what Suzuki Motors was actually doing in practice with its caps as opposed to what it could potentially have been doing. Based on the evidence before it, the Court noted the following:
- the trademark HAYABUSA never appeared alone on the caps, but rather, also prominently displayed the trademark SUZUKI and/or the “S” logo;
- between January 2005 and March 2008, Suzuki Motor sold less than $8,000 worth of caps (i.e. approximately 400 caps) to its authorized dealers (as opposed to the ultimate consumer);
- the caps were only sold in Canada through authorized Suzuki dealers, of which there were approximately 250 in Canada; and
- the caps were not advertised on television and Suzuki Motors did not run print advertising just for caps.
The Court further held that these caps would most likely be purchased by consumers who are familiar with Suzuki motorcycles and who either own or would like to own such motorcycles. Ultimately, when considering the fact that these caps, which also displayed Suzuki Motor’s house brand and logo, were sold in limited quantities to targeted consumers through a single channel of trade, the Court found it difficult to conceive any likelihood of confusion. Indeed, the Court held that there could be no overlap between the channel of trade used by Suzuki Motor to sell its caps and the regular channels of trade for clothing items.
In contrast, had Suzuki Motor’s registration for the trademark HAYABUSA equally covered caps, the issue of confusion might have been a much different consideration.
This decision is noteworthy insofar as it illustrates the difficulties an opponent faces when relying upon an unregistered trademark in opposition proceedings. In this regard, although the advantages of a trademark registration in the context of litigation are often emphasized, these same advantages are equally beneficial in the context of trademark opposition proceedings and can greatly increase an opponent’s chances of success as well as decrease the costs that would normally be required to establish one’s use of an unregistered trademark.