Mitsubishi drives forward TM lawsuit against dealership
Mitsubishi’s North American division has filed a claim for trademark infringement, unfair competition, and breach of contract against one of its dealerships, following an unauthorised relocation.
The complaint was filed in the US District Court for the Eastern District of New York on Tuesday, February 13.
Mitsubishi Motors North America, a division of the Japanese car manufacturer, accused Planet Mitsubishi of “wilfully and intentionally operating a Mitsubishi dealership, and improperly utilising the Mitsubishi trade names, trademarks, and trade dress” without authorisation.
The North American division is a licensee of several Mitsubishi trademarks, including the word mark ‘Mitsubishi’ (US trademark number 0,844,427) and the three-diamond logo design mark (US trademark number 0,931,665).
Mitsubishi North America authorises local dealers to sell and provide services relating to Mitsubishi vehicles, including allowing them to use the Mitsubishi marks. Planet has been authorised to act as a dealer since 2012 and, through a dealer and sales agreement made in 2016, is authorised to operate a Mitsubishi dealership solely at one location in Franklin Street, New York.
Under the agreement, Planet can use the marks in relation to its work at the location but cannot operate a dealership, or use the marks, at any other location, without “prior written approval”, according to the complaint.
In October 2017 Mitsubishi denied Planet’s request to relocate its dealership to Valley Stream, New York, a request which was made due to the upcoming expiration of its lease for the agreed location.
Planet challenged the “unreasonable” denial through filing a request for adjudication with the New York Department of Motor Vehicles (DMV) in December. In the same month it proposed another location to move to Main Street, New York. This was denied by Mitsubishi in January. Planet again filed a request for adjudication with the DMV.
The claim states that the Main Street location is “vastly inferior” to Planet’s authorised location, with “insufficient space for the conduct” of dealership operations. In addition it lacks a high volume of foot traffic, accessible parking, and public visibility.
According to the lawsuit, Planet closed its dealership and began operating from the unauthorised Main Street location in February. It posted signs at the approved site, directing customers to the new location. The unauthorised site features Mitsubishi marks and sells Mitsubishi vehicles under the trade name ‘Planet Mitsubishi’.
Mitsubishi requested that Planet cease the unauthorised activity via a letter. Planet confirmed that it would not “cease its unauthorised use” of the marks on February 9, the car manufacturer claimed.
In breach of the dealership agreement, Planet is allegedly engaging in unfair competition by using Mitsubishi’s name to operate and promote an unauthorised dealership, “falsely communicating” approval of the activities.
The North American division is seeking preliminary and permanent injunctive relief as well as compensatory and consequential damages.
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