On July 26, 2012, Yanmar America Corporation of Adairsville, Georgia (“Yanmar”) filed a trademark infringement action in the Northern District of Georgia against Huel Elliott and Elliott Farm Equipment of Gainesville, Georgia (“Elliott”).  Yanmar alleges that Elliott sells or facilitates the importation and sale into Georgia of certain “grey market” tractors — that is, tractors bought and sold outside of the manufacturer’s authorized trade channels — bearing various YANMAR trademarks.  Yanmar asserts causes of action for trademark infringement and unfair competition under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)(1)(A)), false advertising under Section 43(a)(1)(B) of the Lanham Act § 1125(a)(1)(B)), trademark infringement and unfair competition under Section 42 of the Lanham Act (15 U.S.C. § 1124), infringement of registered trademarks (15 U.S.C. § 1114), trademark dilution under Section 43(c) of the Lanham Act (15 U.S.C. § 1125(c)), trademark infringement and unfair competition under common law, violation of the Georgia Unfair Competition and Deceptive Trade Practices Act (O.C.G.A. § 10-1-372), violation of the Georgia Fair Business Practices Act (O.C.G.A. §§ 10-1-390, et seq.), and violation of the Georgia False Advertising Statute (O.C.G.A. §§ 10-1-420, et seq.).

According to the complaint, Yanmar’s Japanese parent company, Yanmar Company Limited (“YCL”), was founded in 1912 and “developed the world’s first commercially viable small diesel engine in 1933.”  YCL is involved in the global manufacture, sale, promotion, and distribution or tractors, marine engines, construction equipment and other products under its trademark YANMAR.  Yanmar alleges that it was established in 1979 to distribute and sell diesel engines and industrial equipment in the United States.  Yanmar claims to operate out of a 500,000-square foot facility in Adairsville, Georgia.  YCL is the registered owner of nine federal trademark registrations for various configurations of YANMAR, including word and design marks.  According to the complaint, Yanmar is the exclusive licensee of YCL’s federal trademarks and is entitled to pursue actions against alleged infringers.

Yanmar alleges that YCL manufactures tractors specifically for distribution in Japan (“Japanese Local Market YANMAR® tractors”) that are used primarily in flat, muddy rice paddies and are typically equipped with only a small rotary tiller.  Yanmar claims that the YANMAR® tractors sold in the United States are materially different, are intended for use in agriculture and construction on a variety of terrains, and include front end loaders, backhoes, and large rotary mowers.  Yanmar further alleges that the Japanese Local Market YANMAR® tractors differ from the U.S. tractors in a number of respects, primarily in the area of safety standards, and are not suitable for distribution and use in the U.S. 

Yanmar claims that Elliott intentionally purchased, imported, distributed, and sold Japanese Local Market YANMAR® tractors in the U.S. in order to “exploit the valuable and favorable reputation and goodwill earned by YANMAR® tractors,” and knowing that such actions would create a likelihood of consumer confusion and possible products liability exposure.  Yanmar asks the Court to grant an injunction prohibiting Elliott from using the YANMAR trademarks and from importing and selling the Japanese Local Market YANMAR® tractors.  Yanmar further asks the Court to order the impounding and destruction of Elliott’s infringing goods, as well as for monetary and other relief.

The case is action number 2:12-cv-00181-WCO, and has been assigned to Judge William C. O’Kelley. 

UPDATE:  The parties filed a Consent Judgment and Injunction to settle the case, whereby Elliott is prohibited from importing and selling the accused products.  Judge O’Kelly entered the judgment and injunction on August 7, 2012.