toyo tire and rubber et. al. v. south china tire and rubber et. al

8/13/2019 Toyo Tire and Rubber Et. Al. v. South China Tire and Rubber Et. Al.

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in this Judicial District pursuant to 28 U.S.C. 1391(b), (c) and (d), and 1400(b)

Plaintiffs are informed and believe, and on that basis allege, that Defendants have

conducted and continue to conduct business in this District and have engaged in the

complained of activities in this Judicial District.

The Parties

3. 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.

4. Plaintiff TTC is a California corporation with corporate headquarters and

principal place of business located at 5665 Plaza Drive, Cypress, CA 90630.

5. Plaintiffs are informed and believe, and on that basis allege, that Defendant

South China Tire and Rubber Co., Ltd. (South China Tire) is a Chinese corporation

with its principal place of business located at 116 Donghuan Road, Panyu District,

Guangzhou City, Guangdong Province, China 511400. Plaintiffs are informed and

believe, and on that basis allege, that South China Tire is engaged in the business of

manufacturing, using, exporting, importing, selling and/or offering for sale the tires at

issue in this lawsuit, including tires sold under the Lexani, LionHart, Winrun,

Sunny, Wanli, and D series names and brands.6. Plaintiffs are informed and believe, and on that basis allege, that Defendant

Turbo Wholesale Tires, Inc. (Turbo Tires) is a California corporation with its principal

place of business located at 5793 Martin Rd., Irwindale, CA 91706. Plaintiffs are

informed and believe, and on that basis allege, that Turbo Tires is engaged in the business

of purchasing, using, selling and/or offering for sale in this Judicial District the tires at

issue in this lawsuit, including tires sold under the LionHart and Lexani, series name

and brand, as manufactured by South China Tire.

7. Plaintiffs are informed and believe, and on that basis allege, that Defendant

DCenti Tire Inc. (DCenti Tire) is a California corporation with its principal place of

business located 13875 Live Oak Avenue, Irwindale, California 91706, and an additiona

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

in the business of purchasing, using, selling and/or offering for sale in this Judicial

District the tires at issue in this lawsuit, including the D series names and brands, as

manufactured by South China Tire.

8. Plaintiffs are informed and believe, and on that basis allege, that each of

these Defendants has ongoing and systematic contacts with this Judicial District, and has

placed the products accused of infringement herein into the stream of commerce knowing

and expecting that such products would end up in this Judicial District.

9. The acts complained of herein by TTR and TTC arise out of the same

transaction, occurrence, or series of transactions or occurrences and involve common

questions of law and fact common to TTR and TTC.

Claim 1: Patent Infringement

10. This is a claim by TTR against Defendants and each of them for patent

infringement under 35 U.S.C. 271.

11. TTR hereby incorporates Paragraphs 1 through 9, inclusive, herein by

reference.

12. On March 9, 2004, the U.S. Patent and Trademark Office duly and legallyissued U.S. Patent No. D487,424 ("the 424 patent") to Takahashi et al. A true and

correct copy of the 424 patent is attached to the Complaint as Ex. 1. The 424 patent

claims an ornamental design for an automobile tire, as shown and described in Figures

1 through 6 of the 424 patent. The United States Patent and Trademark Office issued a

certificate of correction attached as Ex. 2 for the 424 patent.

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.

14. TTR is informed and believes, and on that basis alleges, that Defendants

have made, used, sold and/or offered for sale one or more tire products, including but not

limited to the Lexani LX-Six tire, LionHart LH-3 tire, Winrun KF770 tire, Sunny

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

substantially similar to the ornamental design of the 424 patent.


have actively induced others, including each other, to directly infringe the 424 patent by

aiding, abetting, encouraging, and otherwise promoting the use, manufacture, sale and/or

offer for sale by others of infringing tire products, including but not limited to the Lexani

LX-Six tire, LionHart LH-3 tire, Winrun KF770 tire, Sunny SN3890 tire, Wanli S-1089

tire and/or D5000 tire with knowledge of the infringement of the 424 patent and with the

intent to cause such infringement and/or with willful blindness to the existence of patents

of TRR.


business model is built in large part upon deliberately copying the tire designs of major

tire manufacturers such as TTR and Yokohama, and in conscious ignorance of the patent

portfolios of such companies.


infringement of the 424 patent has been and continues to be willful and deliberate.

18. TTR is informed and believes, and on that basis alleges, that Defendantshave had notice and actual knowledge of the 424 patent before the filing of TTRs

complaint with the U.S. International Trade Commission and before the filing of this suit.

19. TTR has been damaged by Defendants' infringement of the 424 patent in an

amount to be determined at trial, such damages including all of Defendants' profits from

the infringement alleged herein.

20. Furthermore, by these acts, Defendants have irreparably injured Toyo and

such injury will continue unless Defendants are enjoined by this Court.

Claim 2: Trade Dress Infringement

21. This is a claim by TTC against Defendants and each of them for trade dress

infringement in violation of 15 U.S.C. 1125.

22. TTC hereby incorporates Paragraphs 1 through 9, inclusive, herein by


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reference.

23. The tire market in the United States consists of sales of original equipment

tires (for new vehicles) and replacement tires (for existing vehicles). Upon information

and belief, in 2012, almost 193 million automobile replacement tires were sold in the

United States, as compared to nearly 41 million original equipment tires. For ligh

trucks, the sales figures were approximately 28 million replacement tires and 4 million

original equipment tires. For medium and heavy trucks, sales were about 16 million and

5 million, respectively. Upon information and belief, in 2012, U.S. replacement tire sales

totaled nearly 193 million units and $37.8 billion.

24. In the United States, Toyo Tires has repeatedly been named the Number One

Overall Brand by North American tire dealers in Tire Review magazine's Annual Tire

Brand Study. Toyo offers consumers a wide range of tires to fit virtually any need and

any type of vehicle under the "Toyo" and "Nitto" brands. The tire portfolio of TTR and

TTC covers a broad range of applications from the high-performance, racing-inspired

"Proxes" and "NT" lines to the "Open Country" and "Grappler" lines for light trucks and

SUVs, to the luxury-touring Versado LX, to a broad range of commercial truck tires.

25. TTC is the exclusive distributor for Toyo-branded tires in the United Statesmarket and has built a solid reputation around the world for sleek, high-quality tires.

26. Toyo-branded tires are specifically designed to provide unique and

distinctive tread and sidewall appearance, without compromising optimum performance

in their intended environment, whether on an interstate highway, a back country road, or

off-road. Toyo has developed unique and distinctive tread and side wall patterns that

visually set its tires apart from its competitors without impacting performance.

27. In 1998, TTC introduced the Toyo-branded Proxes S/T tires. With its

unique, sporty-yet-sleek appearance and significant sales volume, the ornamental

distinctive look of the Proxes S/T tire has become associated with the Toyo brand

This look includes a distinctive Double-V tread design with partially-interlaced

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.

28. In 2003, TTC introduced the Toyo-branded Proxes 4 tires. With its unique

sporty-yet sleek appearance and significant sales volume, the ornamental, distinctive

look of the Proxes 4 tire has become associated with the Toyo brand. This look

includes a distinctive W tread design with staggered check-mark shaped grooves on

opposite sides of a scalloped center rib.

29. TTC has continuously and extensively advertised, marketed and promoted

its Proxes S/T and Proxes 4 tires in the United States, investing approximately $5.7

million in such activities over the last ten years, including advertising directed to the

distinctive, non-functional aspects of the appearance of the Proxes S/T and Proxes 4 tires.

30. More than 2.5 million Proxes S/T tires have been sold to customers

throughout the United States since 1998.

31. More than 3 million Proxes 4 tires have been sold to customers throughout

the United States since 2003.

32. TTC has protectable trade dress in the overall appearance of the Proxes 4

tires and Proxes S/T tires, which has become associated with TTC (hereinafter the the

PXST Trade Dress and the PX4 Trade Dress respectively). The PXST Trade Dressand the PX4 Trade Dress are arbitrary, inherently distinctive, and non-functional.

33. TTC has built up valuable recognition and goodwill in its distinctive PXST

Trade Dress and PX4 Trade Dress. TTC has expended, and continues to expend

substantial time, effort, money, and other resources to develop and maintain the valuable

goodwill that has come to be associated with the Proxes S/T Trade Dress and the PX4

Trade Dress.

34. As a result of TTCs efforts, the PXST Trade Dress and PX4 Trade Dress

have acquired secondary meaning and distinctiveness among consumers and members of

the industry, and they continue to have secondary meaning and distinctiveness.

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

Trade Dress and PX4 Trade Dress have come to be, and now are, well and favorably

known to the public, particularly to performance tire consumers, as being associated with

TTCs high quality tires.

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.

37. To any ordinary observer, and to customers and members of the trade, the

look of the Sunny SN3980 tire, Wanli S-1098 tire, and/or D2000 tire is confusingly

similar to, if not identical to, the distinctive look of the PXST Trade Dress, including

its tread pattern, which is unique in appearance, eye-catching and readily recognized

among customers and members of the trade.

38. To any ordinary observer, and to customers and members of the trade, the

look of the Lexani LX-Six tire, LionHart LH-3 tire, Winrun KF770 tire, Sunny SN3890

tire, Wanli S-1089 tire, and/or D2005 tire is confusingly similar to, if not identical to, the

distinctive look of the PX4 Trade Dress, including its tread pattern, which is unique in

appearance, eye-catching and readily recognized among customers and members of the

trade.39. Defendants past, present and future commercial distribution, sales and/or

offers for sale of the aforesaid tires employing the PXST Trade Dress and PX4 Trade

Dress constitutes trade dress infringement under 15 U.S.C. 1125.

40. TTC is informed and believes that trade dress infringement has been and

continues to be willful and deliberate.

41. TTC has been damaged by Defendants trade dress infringement, in an

amount to be determined at trial. Furthermore, by these acts, Defendants have irreparably

injured TTC and caused TTC to suffer a substantial loss of goodwill and reputation, and

such injury will continue unless they are enjoined by this Court.

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

WHEREFORE, by virtue of the unlawful conduct of Defendants as alleged in

Counts I through VI above, Plaintiffs respectfully pray for judgment against Defendants

as follows:

A. That Defendants be adjudged to have infringed the '424 patent;

B. That Defendants be adjudged to have induced infringement of the 424

patent;

C. That Defendants patent infringement be adjudged willful and deliberate;

D. That this case be deemed exceptional under 35 U.S.C. 285, and that the

damages for patent infringement be enhanced accordingly;

E. That Defendants be adjudged to have infringed TTCs PXST Trade Dress in

violation of 15 U.S.C. 1125(a);

F. That Defendants be adjudged to have infringed TTCs PX4 Trade Dress in

violation of 15 U.S.C. 1125(a);

G. That Defendants trade dress infringement be adjudged willful and

deliberate;

H. That each Defendant, its subsidiaries, affiliates, parents, successors, assignsofficers, agents, servants, employees, attorneys, and all persons acting in concert or in

participation with it be preliminarily and permanently enjoined from:

(1) Infringing or inducing infringement of the 424 patent, and

specifically from directly or indirectly making, using, selling, or offering for sale,

any products embodying the invention of 424 patent during its term, without the

express written authority of Plaintiffs;

(2) Using TTCs PXST Trade Dress, PX4 Trade Dress, or any trade dress

or tread or sidewall design confusingly similar thereto, for or in connection with

advertising, marketing, promoting, distributing, offering for sale, or selling tires;

(3) Using photographs, illustrations, or other depictions of TTCs 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

promoting, distributing, offering for sale, or selling tires;

(4) Using any name, mark, designation, product configuration, trade

dress, or other material for or in connection with advertising, marketing

promoting, distributing, offering for sale, or selling tires that are likely to cause

confusion, mistake or deception as to source relative to any of TTR and TTCs

names, marks, designations, product configurations, or trade dress, including but

not limited to TTCs PXST Trade Dress or PX4 Trade Dress;

(5) Passing off its goods and/or services as those of TTC; and,

(6) Engaging in any conduct aimed at or likely to result in diverting

business intended for TTC or injuring TTCs goodwill or business reputation by

way of imitation, misrepresentation, false statements, advertising, fraud and/or

deception.

I. An order from this Court compelling each Defendant to mail notice letters at

their own expense to all distributors, dealers, accounts, salesmen, employees, jobbers,

and suppliers, informing them that each Defendant has committed patent infringement,

and/or trade dress infringement TTC and that Defendant has no affiliation, connection, orother business relationship with TTC, and requesting that the letter recipients return to

Defendant for full credit or refund all of Defendants tires using the infringing design

and/or trade dress.

J. An order from this Court commanding that each Defendant deliver to TTC

for destruction all advertising, products, tires, labeling, packaging, sales literature

promotional literature, owner's manuals, catalogs, displays, boxes, packages, and other

trade pieces within their possession or control and which use or display the infringing

design and trade dress.

K. An accounting for all profits of each Defendant derived by reason of the acts

alleged in this Complaint.

L. An award of money damages suffered by Plaintiffs in an amount to be


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EXHIBIT 2


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toyo tire and rubber et. al. v. south china tire and rubber et. al

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