TOYO TIRE CASE - US China Trade War Blog

Transcription

Case 8:14-cv-00024-CJC-JPR Document 1 Filed 01/07/14 Page 1 of 25 Page ID #:1
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in this Judicial District pursuant to 28 U.S.C. §§ 1391(b), (c) and (d), and 1400(b).
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Plaintiffs are informed and believe, and on that basis allege, that Defendants have
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conducted and continue to conduct business in this District and have engaged in the
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complained of activities in this Judicial District.
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The Parties
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Plaintiff TTR is a Japanese corporation with its corporate headquarters and
principal place of business at 1-17-18 Edobori, Nishi-ku, Osaka 550-8661, Japan.
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Plaintiff TTC is a California corporation with corporate headquarters and
principal place of business located at 5665 Plaza Drive, Cypress, CA 90630.
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Plaintiffs are informed and believe, and on that basis allege, that Defendant
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South China Tire and Rubber Co., Ltd. (“South China Tire”) is a Chinese corporation
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with its principal place of business located at 116 Donghuan Road, Panyu District,
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Guangzhou City, Guangdong Province, China 511400.
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believe, and on that basis allege, that South China Tire is engaged in the business of
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manufacturing, using, exporting, importing, selling and/or offering for sale the tires at
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issue in this lawsuit, including tires sold under the “Lexani,” “LionHart,” “Winrun,”
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“Sunny,” “Wanli,” and “D” series names and brands.
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6.
Plaintiffs are informed and
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Turbo Wholesale Tires, Inc. (“Turbo Tires”) is a California corporation with its principal
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place of business located at 5793 Martin Rd., Irwindale, CA 91706.
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informed and believe, and on that basis allege, that Turbo Tires is engaged in the business
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of purchasing, using, selling and/or offering for sale in this Judicial District the tires at
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issue in this lawsuit, including tires sold under the “LionHart” and “Lexani,” series name
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and brand, as manufactured by South China Tire.
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7.
Plaintiffs are
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DCenti Tire Inc. (“DCenti Tire”) is a California corporation with its principal place of
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business located 13875 Live Oak Avenue, Irwindale, California 91706, and an additional
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place of business located 800 Monterey Pass Road, Monterey Park, California 91754.
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Plaintiffs are informed and believe, and on that basis allege, that DCenti Tire is engaged
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in the business of purchasing, using, selling and/or offering for sale in this Judicial
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District the tires at issue in this lawsuit, including the “D” series names and brands, as
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manufactured by South China Tire.
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8.
Plaintiffs are informed and believe, and on that basis allege, that each of
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these Defendants has ongoing and systematic contacts with this Judicial District, and has
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placed the products accused of infringement herein into the stream of commerce knowing
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and expecting that such products would end up in this Judicial District.
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9.
The acts complained of herein by TTR and TTC arise out of the same
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transaction, occurrence, or series of transactions or occurrences and involve common
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questions of law and fact common to TTR and TTC.
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Claim 1: Patent Infringement
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This is a claim by TTR against Defendants and each of them for patent
infringement under 35 U.S.C. § 271.
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TTR hereby incorporates Paragraphs 1 through 9, inclusive, herein by
reference.
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On March 9, 2004, the U.S. Patent and Trademark Office duly and legally
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issued U.S. Patent No. D487,424 ("the ‘424 patent") to Takahashi et al. A true and
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correct copy of the ‘424 patent is attached to the Complaint as Ex. 1. The ‘424 patent
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claims an “ornamental design for an automobile tire, as shown and described” in Figures
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1 through 6 of the ‘424 patent. The United States Patent and Trademark Office issued a
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certificate of correction attached as Ex. 2 for the ‘424 patent.
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13.
TTR is the owner of the entire right, title and interest in and to the ‘424
patent by assignment made on November 12, 2002, and recorded on November 21, 2002.
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TTR is informed and believes, and on that basis alleges, that Defendants
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have made, used, sold and/or offered for sale one or more tire products, including but not
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limited to the Lexani LX-Six tire, LionHart LH-3 tire, Winrun KF770 tire, Sunny
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SN3890 tire, Wanli S-1089 tire and/or D5000 tire, that infringe the ‘424 patent. The
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design of each of these tires, in the eye of the ordinary observer, would appear
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substantially similar to the ornamental design of the ‘424 patent.
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15.
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have actively induced others, including each other, to directly infringe the ‘424 patent by
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aiding, abetting, encouraging, and otherwise promoting the use, manufacture, sale and/or
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offer for sale by others of infringing tire products, including but not limited to the Lexani
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LX-Six tire, LionHart LH-3 tire, Winrun KF770 tire, Sunny SN3890 tire, Wanli S-1089
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tire and/or D5000 tire with knowledge of the infringement of the ‘424 patent and with the
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intent to cause such infringement and/or with willful blindness to the existence of patents
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of TRR.
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TTR is informed and believes, and on that basis alleges, that Defendants’
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business model is built in large part upon deliberately copying the tire designs of major
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tire manufacturers such as TTR and Yokohama, and in conscious ignorance of the patent
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portfolios of such companies.
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TTR is informed and believes, and on that basis alleges, that Defendants'
infringement of the ‘424 patent has been and continues to be willful and deliberate.
18.
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have had notice and actual knowledge of the ‘424 patent before the filing of TTR’s
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complaint with the U.S. International Trade Commission and before the filing of this suit.
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19.
TTR has been damaged by Defendants' infringement of the ‘424 patent in an
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amount to be determined at trial, such damages including all of Defendants' profits from
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the infringement alleged herein.
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such injury will continue unless Defendants are enjoined by this Court.
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Furthermore, by these acts, Defendants have irreparably injured Toyo and
Claim 2: Trade Dress Infringement
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This is a claim by TTC against Defendants and each of them for trade dress
infringement in violation of 15 U.S.C. § 1125.
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TTC hereby incorporates Paragraphs 1 through 9, inclusive, herein by
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reference.
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The tire market in the United States consists of sales of original equipment
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tires (for new vehicles) and replacement tires (for existing vehicles). Upon information
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and belief, in 2012, almost 193 million automobile replacement tires were sold in the
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United States, as compared to nearly 41 million original equipment tires. For light
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trucks, the sales figures were approximately 28 million replacement tires and 4 million
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original equipment tires. For medium and heavy trucks, sales were about 16 million and
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5 million, respectively. Upon information and belief, in 2012, U.S. replacement tire sales
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totaled nearly 193 million units and $37.8 billion.
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In the United States, Toyo Tires has repeatedly been named the Number One
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Overall Brand by North American tire dealers in Tire Review magazine's Annual Tire
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Brand Study. Toyo offers consumers a wide range of tires to fit virtually any need and
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any type of vehicle under the "Toyo" and "Nitto" brands. The tire portfolio of TTR and
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TTC covers a broad range of applications — from the high-performance, racing-inspired
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"Proxes" and "NT" lines to the "Open Country" and "Grappler" lines for light trucks and
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SUVs, to the luxury-touring Versado LX, to a broad range of commercial truck tires.
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TTC is the exclusive distributor for Toyo-branded tires in the United States
market and has built a solid reputation around the world for sleek, high-quality tires.
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Toyo-branded tires are specifically designed to provide unique and
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distinctive tread and sidewall appearance, without compromising optimum performance
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in their intended environment, whether on an interstate highway, a back country road, or
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off-road. Toyo has developed unique and distinctive tread and side wall patterns that
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visually set its tires apart from its competitors without impacting performance.
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In 1998, TTC introduced the Toyo-branded Proxes S/T tires. With its
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unique, sporty-yet-sleek appearance and significant sales volume, the ornamental,
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distinctive “look” of the Proxes S/T tire has become associated with the Toyo brand.
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This “look” includes a distinctive Double-V tread design with partially-interlaced,
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downward sloping grooves projecting in an alternating pattern from both the left and
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right outer edges of the tire tread toward the center of the tread.
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In 2003, TTC introduced the Toyo-branded Proxes 4 tires. With its unique,
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sporty-yet sleek appearance and significant sales volume, the ornamental, distinctive
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“look” of the Proxes 4 tire has become associated with the Toyo brand. This “look”
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includes a distinctive W tread design with staggered check-mark shaped grooves on
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opposite sides of a scalloped center rib.
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TTC has continuously and extensively advertised, marketed and promoted
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its Proxes S/T and Proxes 4 tires in the United States, investing approximately $5.7
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million in such activities over the last ten years, including advertising directed to the
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distinctive, non-functional aspects of the appearance of the Proxes S/T and Proxes 4 tires.
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More than 2.5 million Proxes S/T tires have been sold to customers
throughout the United States since 1998.
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More than 3 million Proxes 4 tires have been sold to customers throughout
the United States since 2003.
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TTC has protectable trade dress in the overall appearance of the Proxes 4
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tires and Proxes S/T tires, which has become associated with TTC (hereinafter the “the
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PXST Trade Dress” and “the PX4 Trade Dress” respectively). The PXST Trade Dress
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and the PX4 Trade Dress are arbitrary, inherently distinctive, and non-functional.
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TTC has built up valuable recognition and goodwill in its distinctive PXST
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Trade Dress and PX4 Trade Dress.
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substantial time, effort, money, and other resources to develop and maintain the valuable
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goodwill that has come to be associated with the Proxes S/T Trade Dress and the PX4
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Trade Dress.
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34.
TTC has expended, and continues to expend,
As a result of TTC’s efforts, the PXST Trade Dress and PX4 Trade Dress
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have acquired secondary meaning and distinctiveness among consumers and members of
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the industry, and they continue to have secondary meaning and distinctiveness.
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35.
The PXST Trade Dress and PX4 Trade Dress are now widely known and
recognized by their unique, ornamental and distinctive appearance, which identifies to
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consumers and members of the industry that its source of origin is TTC. The PXST
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Trade Dress and PX4 Trade Dress have come to be, and now are, well and favorably
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known to the public, particularly to performance tire consumers, as being associated with
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TTC’s high quality tires.
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36.
Based on the foregoing, the PXST Trade Dress and PX4 Trade Dress have
become and now are a designation of origin of TTC and as trademarks owned by TTC.
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To any ordinary observer, and to customers and members of the trade, the
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“look” of the Sunny SN3980 tire, Wanli S-1098 tire, and/or D2000 tire is confusingly
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similar to, if not identical to, the distinctive “look” of the PXST Trade Dress, including
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its tread pattern, which is unique in appearance, eye-catching and readily recognized
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among customers and members of the trade.
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38.
To any ordinary observer, and to customers and members of the trade, the
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“look” of the Lexani LX-Six tire, LionHart LH-3 tire, Winrun KF770 tire, Sunny SN3890
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tire, Wanli S-1089 tire, and/or D2005 tire is confusingly similar to, if not identical to, the
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distinctive “look” of the PX4 Trade Dress, including its tread pattern, which is unique in
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appearance, eye-catching and readily recognized among customers and members of the
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trade.
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39.
Defendants’ past, present and future commercial distribution, sales and/or
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offers for sale of the aforesaid tires employing the PXST Trade Dress and PX4 Trade
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Dress constitutes trade dress infringement under 15 U.S.C. § 1125.
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TTC is informed and believes that trade dress infringement has been and
continues to be willful and deliberate.
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TTC has been damaged by Defendants’ trade dress infringement, in an
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amount to be determined at trial. Furthermore, by these acts, Defendants have irreparably
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injured TTC and caused TTC to suffer a substantial loss of goodwill and reputation, and
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such injury will continue unless they are enjoined by this Court.
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42.
By reason of the above actions, TTC is entitled to the full range of relief
under the Lanham Act, 15 U.S.C. §§ 1116-1118.
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PRAYER FOR RELIEF
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WHEREFORE, by virtue of the unlawful conduct of Defendants as alleged in
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Counts I through VI above, Plaintiffs respectfully pray for judgment against Defendants
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as follows:
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A.
That Defendants be adjudged to have infringed the '424 patent;
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B.
That Defendants be adjudged to have induced infringement of the ‘424
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patent;
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C.
That Defendants’ patent infringement be adjudged willful and deliberate;
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D.
That this case be deemed exceptional under 35 U.S.C. § 285, and that the
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damages for patent infringement be enhanced accordingly;
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E.
violation of 15 U.S.C. § 1125(a);
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F.
That Defendants be adjudged to have infringed TTC’s PX4 Trade Dress in
violation of 15 U.S.C. § 1125(a);
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That Defendants be adjudged to have infringed TTC’s PXST Trade Dress in
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That Defendants’ trade dress infringement be adjudged willful and
deliberate;
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H.
That each Defendant, its subsidiaries, affiliates, parents, successors, assigns,
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officers, agents, servants, employees, attorneys, and all persons acting in concert or in
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participation with it be preliminarily and permanently enjoined from:
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(1)
Infringing or inducing infringement of the ‘424 patent, and
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specifically from directly or indirectly making, using, selling, or offering for sale,
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any products embodying the invention of ‘424 patent during its term, without the
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express written authority of Plaintiffs;
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(2)
Using TTC’s PXST Trade Dress, PX4 Trade Dress, or any trade dress
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or tread or sidewall design confusingly similar thereto, for or in connection with
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advertising, marketing, promoting, distributing, offering for sale, or selling tires;
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(3)
Using photographs, illustrations, or other depictions of TTC’s PXST
Trade Dress, PX4 Trade Dress, or any trade dress or tread or sidewall design
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confusingly similar thereto, for or in connection with advertising, marketing,
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promoting, distributing, offering for sale, or selling tires;
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(4)
Using any name, mark, designation, product configuration, trade
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dress, or other material for or in connection with advertising, marketing,
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promoting, distributing, offering for sale, or selling tires that are likely to cause
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confusion, mistake or deception as to source relative to any of TTR and TTC’s
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names, marks, designations, product configurations, or trade dress, including but
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not limited to TTC’s PXST Trade Dress or PX4 Trade Dress;
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(5)
Passing off its goods and/or services as those of TTC; and,
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(6)
Engaging in any conduct aimed at or likely to result in diverting
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business intended for TTC or injuring TTC’s goodwill or business reputation by
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way of imitation, misrepresentation, false statements, advertising, fraud and/or
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deception.
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I.
An order from this Court compelling each Defendant to mail notice letters at
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their own expense to all distributors, dealers, accounts, salesmen, employees, jobbers,
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and suppliers, informing them that each Defendant has committed patent infringement,
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and/or trade dress infringement TTC and that Defendant has no affiliation, connection, or
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other business relationship with TTC, and requesting that the letter recipients return to
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Defendant for full credit or refund all of Defendant’s tires using the infringing design
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and/or trade dress.
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J.
An order from this Court commanding that each Defendant deliver to TTC
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for destruction all advertising, products, tires, labeling, packaging, sales literature,
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promotional literature, owner's manuals, catalogs, displays, boxes, packages, and other
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trade pieces within their possession or control and which use or display the infringing
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design and trade dress.
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K.
An accounting for all profits of each Defendant derived by reason of the acts
alleged in this Complaint.
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4829-8143-7207.1
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An award of money damages suffered by Plaintiffs in an amount to be
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EXHIBIT 2

TOYO TIRE CASE - US China Trade War Blog

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