NATIONAL INDUSTRIAL DESIGN INFRINGEMENT CASE

The Philippines: Kawasaki failed to uphold rights over motorcycle design

In the case between Kawasaki Heavy Industries, Ltd. (KHI) and Kawasaki Motors
(Phils.) Inc. (KMPC), [plaintiffs], and Eastworld Motor Industries Corp. [defendant], the
Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines
(IPOPHL) dismissed the industrial design infringement and unfair competition
complaints filed by the plaintiffs against the defendant’s manufacture and sale of
Sapphire 125 motorcycle (“Sapphire”), which the plaintiffs alleged to have infringed its
Industrial Design Registration Nos. 3-2008-000715 and 3-2008-000718 (Design
Registrations ’715 and ‘718). The plaintiffs manufacture and sell a wide variety of
motorcycles, spare parts and motorcycle accessories. KHI holds Design Registrations
’715 and ’718 with the IPOPHL which were registered on February 9, 2009.These
design registrations cover the design of the plaintiffs’ newest motorcycle, Fury 125
(Fury), which was launched in 2008. The plaintiffs learned that the defendant also
manufactured and sold a motorcycle model, Sapphire, which was launched in March
2009.

The plaintiffs alleged that Sapphire bears nearly all of Fury’s design elements. The
plaintiffs, therefore, filed industrial design infringement and unfair competition
complaints against the defendant for the manufacture and sale of Sapphire, whose
design the plaintiffs claimed to resemble the design of Fury as indicated in their Design
Registrations ’715 and ’718. The defendant denied the plaintiffs’ allegations arguing that
the Sapphire design is substantially different from the Fury design and that they hold a
valid Industrial Design Registration No. 3-2009-00062 (Design Registration ’62), which
covers the Sapphire design. The plaintiffs claimed that the Sapphire design was similar
to the design covered by its Design Registrations ’715 and ’718.The plaintiffs alleged
that their Design Registrations ’715 and ’718 were issued a year prior to the launching
of Sapphire. The plaintiffs also submitted evidence that the defendant sold Sapphire
prior to the date of registration of the defendant’s Design Registration ’62.In view
thereof, the plaintiffs then filed an industrial design infringement case with the BLA of
the IPOPHL. The plaintiffs also filed an unfair competition complaint, alleging that the
defendant employed deception and other means contrary to good faith in passing off its
motorcycles. The defendant contended that the design of the Sapphire motorcycle was
covered by Design Registration ‘62, which was issued in its favor on May 4, 2009.
Hence, the defendant submitted that the infringement and unfair competition complaints
filed by the plaintiff are unfounded.
 The BLA ruled that the main test for substantial identity of design is the overall
appearance of the object and the similarity of its effect upon the eye. To an ordinary
observer, the overall design of Sapphire is not substantially similar to the Fury design.
The designs are not identical taking into consideration the contour, shape and design as
a whole. A casual observation of the designs shows glaring differences. The BLA ruled
that unfair competition cannot be applied in the case of patent infringement. The BLA
held that there is no bad faith or fraud on the part of the defendant since its Sapphire
motorcycle is based on a valid Design Registration ’62 and consumers can easily
distinguish one product from the other. The BLA also ruled that, although the
defendants started selling Sapphire as early as March 2009, which was prior to the
issuance of Design Registration ‘62 in May 2009, the protection to the design retroacts
to the date of filing of the design application once the design is registered. Further, the
BLA cited that the plaintiffs failed to file any adverse information or a petition to cancel
the Design Registration ’62, which the plaintiffs could have done if it wanted to question
the validity of defendant’s registration. Hence, the BLA ruled that the defendant cannot
be held liable for design infringement and/or unfair competition, and therefore dismissed
both complaints filed by the plaintiffs.

Mirandah, G. (2015, November 6). The Philippines: Kawasaki failed to uphold rights
over motorcycle design.
Lexology. https://www.lexology.com/library/detail.aspx?g=746ecebe-4766-44bc-9f2e-
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