Industrial Design Infringement Case Study in the Philippines – Local

Kawasaki fails to protect patented design for fury 125 motorcycle.

Kawasaki alleged that the design elements of its Fury 125 motorcycle are
protected by a design patent which was issued a year prior to the launching of Sapphire
125. Kawasaki also claimed that its Fury 125 was launched one year before Sapphire
125 began selling in the local market. Kawasaki, and its Philippine subsidiaries, filed suit
to stop a local company (Eastworld) from manufacturing and selling Sapphire 125 model
motorcycles. They complained that this motorcycle copies the design elements of its own
motorcycle model Fury 125. The suit was lodged as an administrative action with the
Bureau of Legal Affairs, and relied on two causes of action, patent infringement and unfair
competition. The complaint asked for preliminary injunction. The Bureau refused to issue
a preliminary injunction and ruled against Kawasaki’s charges of infringement and unfair
competition. Kawasaki argued that Eastworld’s patent copied their patented designs,
pointing particularly to the timing of Eastworld’s patent filing. Kawasaki claimed that
Eastworld’s application was filed only after Kawasaki has already launched its Fury 125
motorcycle.

The Bureau was not persuaded, however, and reminded Kawasaki that it neither
filed an adverse information nor petitioned to cancel Eastworld’s design patent, something
which could have been done if it wanted to question the validity of the design patent.
According to the Bureau, the invalidity of the patent under Section 81 of the IP Code can
only be raised as a defense in an infringement action filed in court. It explained that even
assuming the Bureau could apply Section 81 on account of Section 10.2(b) which
discusses invalidation as one of the reliefs available in an administrative action,
invalidation will still be denied in this case. The Bureau’s position is that invalidation can
only be an accessory relief to a finding of infringement. Since Eastworld is not guilty of
infringement, invalidation must be denied according to the Bureau. On Kawasaki’s claim
that Eastworld was in bad faith and was passing off its motorcycles as those of Kawaski’s,
the Bureau disagreed. Citing the Supreme Court case of Kenneth Roy Savage/K Angeline
Export Trading vs. Judge Aproniano Taypin [G.R. No. 134217, May 11, 2000] the Bureau
ruled that unfair competition does not apply in a patent infringement case. The Bureau
also relied on Rule 302 of the Rules and Regulations on Utility Models and Industrial
Designs, which provides that “An industrial design shall not be considered new if it differs
from prior designs only in minor respects that can be mistaken as such prior designs by
an ordinary observer.”

In this regard, the Bureau found that to the ordinary observer, the overall design of
Eastworld’s Sapphire 125 is not identical or substantially similar to Kawasaki’s motorcycle
design. While the Bureau observed that the locations of the muffler, signal light and
daylight lamp may be similar, it found that these aspects are “generic” to most motorcycle
designs. Furthermore, the Bureau noted that the ornamental designs of the gear indicator,
speed meter design, location of fuel cock, headlight, brake disk, are not the same in the
two designs. In fact, the Bureau emphasized that the engine stop switch is absent in
Eastworld’s design, but present in Kawasaki’s design. Moreover, the design of the side
cover of Eastworld’s motorcycle bears the mark “Motorstar”, which distinguishes it
instantly from Kawasaki’s motorcycle. In addition to comparing the designs, the Bureau
also noted that the products in this case are motorcycles, which consumers meticulously
assess and compare with each other, while keeping in mind that it has features or parts
which although it appears to be similar, are necessarily present because they serve or
are necessitated by a technical function. As such, taking into consideration the contour,
shape and holistic design, the Bureau found that the designs were not substantially
similar.

References:

Federis Law. (2015). Kawasaki fails to protect patented design for fury 125 motorcycle.
https://www.federislaw.com.ph/kawasaki-motorcycle-design-patent-philippines/