Doublestar firms seek court relief in Toyo trademark case

Los Angeles, California – Two Chinese tire companies have filed a motion for partial summary judgment against Toyo Tire & Rubber Co. Ltd. and Toyo Tire USA Corp. in a long-running trade dress infringement/unfair competition case.

Doublestar Dong Feng Tyre Co. Ltd. and Qingdao Doublestar Tire Industrial Co. Ltd. filed their motion 7 May before the US District Court for the Central District of California, Southern Division.

On 12 April, Judge Cormac J. Carney of the Central California court partially granted Toyo's motion for summary judgment in the case involving Toyo's Open Country M/T premium off-road tire. Toyo originally filed the case in February 2015 against the two Doublestar companies and Doublestar Group Corp., which was later dismissed from the case.

In the new filing, the Doublestar companies seek to block Toyo from claiming treble damages in the case under the Lanham Act, the federal statute that forbids trademark infringement, trademark dilution and false advertising.

"Having secured a seven-figure contempt award with attorneys' fees and costs that was based on the Lanham Act, Toyo now seeks damages in this case for the same conduct," the document said.

"Because Toyo has already obtained adequate relief under the Lanham Act, it should not be entitled to any further relief," it said.

The District Court imposed $1.56 million (€1.33 million) in contempt sanctions against the Chinese tire makers in late 2017 for violating a 2014 judgment prohibiting the manufacture and sale of tires using a tread similar to that of the Toyo Open Country M/T.

"More importantly, the court need not award Toyo enhanced or treble damages or attorneys' fees stemming from a litigation Toyo did not need to bring against the Doublestar defendants in order to secure an adequate remedy," it said.

The California court has scheduled a 25 June hearing on the motion.