Judge wants more info in Toyo trademark case

By Miles Moore, Senior Washington Reporter

LAS VEGAS (June 24, 2015) — A judge in Nevada federal district court has asked Toyo Tire & Rubber Co. to provide supplemental information in its motion for default judgment and permanent injunction against a Chinese tire maker it accuses of trademark counterfeiting and infringement.

Toyo filed suit in November 2014 against Kabushikiki Kaisha Tokyo Hihoon Rubber Corp., a holding company doing business in Beijing, and its associated business Japan Toyomoto Tire Corp. Despite their representations of being Japanese, Toyo said, the companies have no presence in Japan.

The Chinese companies have used the Toyomoto name since around 2010, and have consistently infringed on Toyo's trademarks since then, according to the lawsuit.

It was no accident that Toyo filed its suit against Kabushikiki and Toyomoto in Las Vegas in November, according to the complaint. On Nov. 3, 2014, Toyo representatives visited the Toyomoto booth at the Specialty Equipment Market Association (SEMA) Show, and found tires for sale under the Toyomoto trademark.

“The Toyomoto mark is substantially indistinguishable from and confusingly similar to the Toyo marks,” the complaint said.

“In addition, the defendants have recently filed applications in foreign countries to register the Toyomoto logo and mark, and Toyo has opposed those applications, asserting its prior and superior rights in its Toyo marks,” it said.

Toyo asked for a permanent injunction against the use of the Toyomoto logo and mark, statutory damages, triple damages and the defendants' profits from selling Toyomoto tires.

When Kabushikiki failed to file a brief in opposition to Toyo's complaint, Toyo asked the Nevada court for default judgment and a permanent injunction.

However, Judge Cam Ferenbach issued an order June 15, directing Toyo to demonstrate that the court has jurisdiction to issue such an order.

“Before considering whether default judgment should be entered, the court has an affirmative duty to ensure that it has personal jurisdiction over the defaulted defendant and subject-matter jurisdiction over the plaintiff's action,” Judge Ferenbach wrote.

Toyo said Judge Ferenbach's order is a normal part of due process.

“Toyo will supply the requested information and is confident the court will rule in its favor,” the tire maker told Tire Business. “In fact, the court has already issued a seizure order, as well as a preliminary injunction against Toyomoto which remains in place.”

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