Judge issues mixed ruling in trade mark war between Goodyear, Dunlop
Intellectual Property July 9, 2018 9:59 pm By Christine Caulfield | Melbourne

A judge has issued a mixed ruling in a long-running battle between US tyre giant Goodyear and UK rival Dunlop over trade marks for the words ‘Dunlop’ and ‘Flying D’.

Federal Court Justice John Nicholas found in favor of Dunlop in its bid to rectify the Trade Mark Register to remove the disputed marks for certain classes of tyres. Dunlop also escaped a claim that its use of the trade marks was misleading or deceptive. But in appealing a decision by IP Australia, which upheld Goodyear’s opposition to Dunlop’s registration of the marks, Dunlop lost.

Goodyear US is the owner of the Australian registered trademarks ‘Dunlop’ and ‘Flying D’, and licenses subsidiary Goodyear Australia to use the marks. The registered marks were assigned to Goodyear in 2006, when it purchased its predecessor Ansell Ltd’s interest in a partnership, known as South Pacific Tyres, between a Goodyear US subsidiary and an Ansell subsidiary.

Until 1987, Ansell, then called Pacific Dunlop, manufactured aircraft tyres branded with the marks from a factory in Victoria, Australia. Goodyear then imported the tyres from Dunlop Aircraft Tyres Ltd in England and sold them in Australia. The arrangement ceased three years ago, when Dunlop stopped supplying the tyres to Goodyear. Dunlop also re-treads aircraft tyres from its factory in Birmingham, UK.

In 2008, Dunlop asked Goodyear to license the ‘Dunlop’ and ‘Flying D’ marks, but the request was refused. In 2009, Dunlop applied to IP Australia to register the marks for aircraft tyres and tubes, and for aircraft tyre retreading services. Goodyear opposed the registration and a delegate of the Register of Trade Marks sided with Goodyear in February 2015.

In March of that year, Dunlop wrote to Goodyear, saying its subsidiary, Aero Parts, would no longer supply Dunlop aircraft tyres to Goodyear in Australia. Dunlop had commenced selling its aircraft tyres in Australia through Aero Parts in 2013.

Dunlop and Goodyear both appealed the trade mark delegate’s decision to the Federal Court. Goodyear also filed claims alleging Dunlop was infringing on Goodyear’s Dunlop trade marks and was engaging in misleading conduct under the Australian Consumer Law.

Dunlop filed a cross-claim, seeking the removal of Goodyear’s registration of the dispute trade marks for aircraft tyres and retreading services on the grounds of non-use. Goodyear US hasn’t used the marks for three consecutive years, it argued.

The company also called for orders rectifying the registered marks for aircraft tyres, claiming any use of the marks was likely to cause confusion or deceive consumers.

Goodyear argued to the court that it had operated the Dunlop-branded aircraft tyre business for decades, and that, as a result of its ownership of the disputed trade marks in Australia, Goodyear had the exclusive right to use them in relation to aircraft tyres and related services.

If Dunlop’s trade mark applications were registered, the rights held by Goodyear US would be “greatly diminished” and, commercially, be of little value, Goodyear argued.

In siding with Goodyear on the issue of use of the trade marks, Judge Nicholas ruled that because Goodyear Australia had used the disputed marks, and because the company was a wholly-owned subsidiary of Goodyear US, that use was known and approved of by Goodyear US. Further, the use constituted trade mark use, he said.

“The appearance of the Dunlop/Flying D marks on new aircraft tyres indicated that such tyres had been made by or under the aegis of the registered owner of those marks or its authorised licensee. By importing
and then selling the aircraft tyres so marked in Australia, Goodyear Australia was using the Dunlop/Flying D marks as trade marks,” the judge said.

The judge did, however, order the removal of the trade marks from the register to cover aircraft tyre retreading services.

“There is no suggestion in the evidence that Goodyear US proposes to use any of the Registered Marks that cover aircraft re-treading services in relation to such services in the future,” he said.

On whether Goodyear’s use of the registered marks on aircraft tyres and retreading services was likely to deceive or cause confusion, Judge Nicholas sided with Dunlop.

“The use of the Dunlop/Flying D Registered Marks is likely to deceive or cause confusion when used in relation to aircraft tyres because their presence on a new aircraft tyre is likely to signify to purchasers or
prospective purchasers that the tyre has been manufactured by or under the aegis of the trade mark owner or its authorised licensee. While the Dunlop/Flying D Registered Marks once indicated the existence of such a connexion, they have not done so for a considerable number of years,” the judge said.

The court ruled however that Goodyear US had not abandoned the registered trade marks and that Dunlop’s appeal against the decision of the Registrar’s delegate refusing registration of the Dunlop/Flying D marks must be dismissed.

But a claim by Goodyear that by using the Dunlop/Flying D marks for aircraft tyres and re-treading services in Australia, Dunlop had engaged in misleading or deceptive conduct in violation of the Australian Consumer Law was dismissed. So too was Goodyear’s infringement claim.

Goodyear had argued that the use of the Dunlop/Flying D marks in Australia by Dunlop conveyed a false representation that Dunlop and its products “have a commercial association” with Goodyear.

In throwing out the claims, Judge Nicholas found that people working in the aviation industry would have understood that Goodyear’s aviation business was the sole or at least principal distributor in Australia of Dunlop branded aircraft tyres and that Goodyear Aviation’s reputation with respect to Dunlop aircraft tyres was nothing more than that of a distributor.

“The Goodyear Parties’ case assumes that [people] working in relevant sections of the aviation industry, would not appreciate that the UK manufacturer of Dunlop branded aircraft tyres may be legally entitled to appoint another distributor of its products in Australia in place of Goodyear Australia. That assumption would be an unreasonable assumption to make especially by people working in such a highly specialised and sophisticated industry,” the judge said.

“I reject the suggestion that in seeking to supply its aircraft tyres in Australia directly, or through another distributor, DATL would be taking advantage of the Goodyear Parties’ goodwill and reputation in any of the Registered Marks. The goodwill and reputation it will be taking advantage of is that attaching to its own business as the manufacturer of Dunlop branded aircraft tyres.”

The case is Dunlop Aircraft Tyres Limited v The Goodyear Tyre and Rubber Co.

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Christine Caulfield

Christine Caulfield has been a journalist for 18 years. She was most recently the Co-Managing Editor at US legal news publication Law360. Prior to that she worked as the County Court reporter for The Herald Sun. She is Co-Founder and Editor of Lawyerly.