DETROIT-What's in a name? That's what a federal judge will have to determine in light of a lawsuit filed against General Motors Corp. by Hankook Tire America Corp. over use of the ``Aurora'' brand name.
The Hackensack, N.J.-based tire maker claims GM's Aurora-badged Oldsmobile-which just finished its first model year-infringes on Hankook's trademark.
In a civil action filed Nov. 4, 1994, in U.S. District Court in Newark, N.J., the company also charged Detroit-based GM with unfair business practices and ``statutory and common law unfair competition'' for using the same name that Hankook said it has branded on a line of tires since at least March 1979.
Hankook Tire America, a subsidiary of Korea-based Hankook Tire Manufacturing Co. Ltd., said it registered the Aurora name for tires and tubes with the U.S. Patent and Trademark Office, and has owned it since Oct. 13, 1981. In July 1994, the company said it became aware GM was ``heavily advertising and promoting a new automobile under the name Aurora.''
Stating the automaker's use of the name ``is likely to cause confusion,'' the lawsuit further charges GM intentionally set out to ``deceive purchasers into believing'' its cars ``have been approved or endorsed'' by Hankook. That, the tire maker said, continues to cause it ``serious and irreparable damage.''
Hankook is asking, among other things, for the following remedies:
That GM stop using the name;
That GM publish corrective advertising;
That the carmaker pay to Hankook three times the profits it has made on sales of the Oldsmobile Aurora;
That GM pay Hankook's attorneys' fees and court costs for the legal action; and
That Hankook be compensated for damages it incurred over GM's use of the Aurora name.
Adding all those up could theoretically cost General Motors millions-and that's nothing short of extortion, said a GM attorney.
Kenneth D. Enborg, counsel responsible for GM's copyright and trademark matters worldwide, called Hankook's action ``a hold-up-somebody had the bright idea to use this issue to extract some money from GM. This doesn't strike me as a case about principle.'' He added: ``(They decided) to use it to hold GM up for ransom.''
While admitting the automaker was denied its request to register the Aurora name, Mr. Enborg told TIRE BUSINESS that was because a German manufacturer of automotive heating/air conditioning components-Aurora Konrad G. Schulz GmbH & Co.-already had registered the name, as have a number of other firms as well.
Before the case can continue, Mr. Enborg said that in an April 12 court hearing both sides were given 60 days to produce evidence whether or not Hankook planned to abandon use of the Aurora name, as reported in a TIRE BUSINESS story last June which stated the company said it was discontinuing the Aurora tire line.
Mr. Enborg contends that the Aurora name ``is diluted and that there would be no likelihood of confusion'' arising out of GM's use and registration of the name.
For years, GM has coexisted with virtually every tire maker, he said, and ``we've always worked out accommodations with each other. There's kind of an unwritten rule. . . that we're not going to call a car a `Goodyear,' and they won't name a tire `Chevrolet.'
Other instances where vehicles and tires share the same name, seemingly without a problem, he said, include Wrangler, Prowler, Eagle and Alliance.
Hankook attorney Cindy Weber, with the Washington, D.C., law firm Sughrue, Mion, Zinn, Macpeak & Seas, admitted the tire maker didn't make any sales of the Aurora tire in 1994, but has begun selling it again and intends to keep and use the trademark.
If Hankook had never used Aurora, then came out with such a tire now, ``I bet GM would be taking a different position,'' she said. ``. . . They've argued in the past that there is a likelihood of confusion in other cases. . . It depends on who's first.''