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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.
15. TTR is informed and believes, and on that basis alleges, that Defendants
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.
16. TTR is informed and believes, and on that basis alleges, that Defendants
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.
17. 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. 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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