During the course of the recent SEMA Show/Global Tire Expo, Toyo Tire & Rubber Co. and its U.S. operations took legal action against a Chinese tire firm whose display features a business name and logos that infringed on its name and logomark.
Toyo filed a trademark infringement suit on Nov. 4, against Chinese firm Japan Toyomoto Tire Corp., and its affiliates Kabusikiki Kaisha Tokyo Nihoon Rubber Corp., Toyomoto (Beijing) International Trading Co., and Toyomoto Tire (U.S.) Inc. Toyo staff had discovered the previous day – the final trade show setup day prior to the opening of the SEMA Show – that Toyomoto was “marketing and selling tires using the ‘Toyomoto’ mark, related domain names, and logos in direct infringement of Toyo’s long established ‘Toyo’ trade name and trade mark,” according to the tiremaker’s news release.
The complaint stated: “Defendants… have intentionally adopted the Toyomoto mark to take advantage of the tremendous reputation and goodwill of the famous Toyo marks, and continue to do so knowing of the irreparable harm that they have caused and will continue to cause Toyo, its marks, and the public.”
The court granted Toyo’s request for a temporary retraining order on Nov. 6, and ordered seizure of “specified items from Toyomoto’s booth” (defined as banners, papers, brochures, display items and products bearing the infringing marks) and directed Toyo to post a $50,000 security bond and serve Toyomoto with a copy of the complaint.
Toyomoto was given the opportunity to respond to the complaint, but they did not, and on Nov. 12, the U.S. District Court of Nevada issued a preliminary injunction against Toyomoto, finding that: “The Toyomoto mark is confusingly similar to the Toyo marks and the defendants are using the mark for the same goods covered by Toyo’s trademark registrations. In addition, defendants are claiming that they are a Japanese company, (which is likely to exacerbate confusion with Japan-based Toyo), even though defendants are China-based companies.”
The order effectively enjoins Toyomoto from using the Toyomoto mark in commerce, including the sale, distribution, promotion and advertising of tires bearing the Toyomoto mark.
Toyo said it is seeking a permanent injunction that would prohibit Toyomoto from “continuing to infringe on Toyo’s intellectual property rights, together with other corrective relief, including destruction of infringing products and materials, and recovery for damages arising from Toyomoto’s actions.”
This was not the first time Toyo has taken legal action against claimed infringers at the SEMA Show; last year Toyo a trademark infringement lawsuit against Toyama Tyre Corp. Ltd. Ironically, on Oct. 6, the U.S. District Court in Nevada issued a permanent injunction against Toyama, enjoining the company from using any reproduction, counterfeit, copy, or colorable imitation of the Toyo marks in commerce, and awarding Toyo $100,000 in damages.
