Registering a trademark can benefit a company even after... 80 years. For that long, a protection certificate lay in the drawer of the Indian branch of tire giant Goodyear before being used in a legal dispute. On this basis, the Delhi court ordered a regional company to stop using a deceptively similar trademark and almost immediately reduced the losses of the Ohio-based manufacturer.
Goodyear is the third-largest tire manufacturer in the world. Founded in the 19th century, the Ohio-based company produces tires for the automotive, aviation, and motorsport industries, and registered its trademark on the U.S. market as early as 1906. By 1922, Goodyear had expanded its operations with factories in India, and 20 years later, it also registered its trademark there.
– Goodyear's conduct is an excellent example of how to protect one's trademarks. Of course, we must take into account the legal specifics of U.S. companies and the historical context, but registering one's trademark just a few years after starting operations, and that at the beginning of the 20th century, shows how the mindset of anyone who wants to build something lasting and inimitable should look – comments Marek Czyżewski, chairman of the board of the Pravna.pl group, which provides, among other things, legal assistance with trademark registration.
You Cannot Tarnish a Reputation with Counterfeits
You Cannot Tarnish a Reputation with Counterfeits
As it turned out, registering the trademark in India paid off for the American giant after nearly 80 years. In February 2020, the brand's lawyers came across a mark in Indian registry catalogs – "GOOD YEAR" – that was deceptively similar to their own, which had been successfully used for over a century. The competing mark was used in reference to automotive greases and oils. It would probably have gone unnoticed were it not for one small detail. A year earlier, the rightful owner of the Goodyear brand had registered additional trademarks in India relating to industrial oils and greases.
Consequently, Goodyear turned to the Delhi High Court seeking an injunction restraining the competing company from using the registered Goodyear trademark or any deceptively similar mark.
Admittedly, the Indian company tried to defend itself by claiming it had been using the mark for oils since 1997, but the court had little doubt. It ordered the immediate cessation of the use of the mark registered by the American giant – even if it is only very similar. The ruling is interim, as another hearing is scheduled for September.
How Another Giant Wins Against Unfair Competition
The Delhi court found the local company's explanations unreliable and stated that the use of a deceptively similar trademark was not coincidental. The historical presence of the Goodyear brand on the Indian market was taken into account. The court emphasized that the Ohio-based company is one of the world's largest tire concerns and currently employs approximately 64,000 people in 47 plants across 21 countries, with Goodyear's turnover in 2014-2018 amounting to $50 billion. This alone attests to the strong reputation of the "GOODYEAR" brand. Additionally, in India, the aforementioned trademark is available throughout the country, with net sales for 2014-2018 exceeding $1 billion.
Companies Defend Themselves Against Theft Worldwide
– In light of these facts, the court found that there was no way someone in the automotive industry could be unaware of the Goodyear brand's existence and proved that the mark is a well-known mark – says Czyżewski, adding: – Examples of court disputes – this one from India or China – show that European brands are not powerless against Asian entities, and commercial courts do not base their rulings on nationalist motives. However, one must remember the foundations, namely trademark registration.
Czyżewski mentions a legal battle in China. There, German Stihl – a giant in the chainsaw and lawnmower segment – obtained nearly a million dollars in compensation after a Chinese company released over 19,000 chainsaws bearing the Stihl symbol onto the market. The value of the goods was approximately $35,000. Those guilty of trademark theft were also given suspended prison sentences.
Under the Polish legal system, penalties can also be high. Anyone who uses a counterfeit trademark or a registered one without the right to do so may face up to two years in prison and must reckon with a fine that can amount to as much as several dozen percent of the company's annual revenue. Today, most cases of unlawful trademark use are resolved through settlement.
Summary
The Delhi court ordered the Indian company to stop using a mark deceptively similar to "GOODYEAR." The decision was made possible by a protection certificate registered in India 80 years earlier, underscoring the importance of long-term intellectual property protection. Goodyear proved its reputation by pointing to, among other things, employment of 64,000 people in 47 plants and turnover of $50 billion in 2014–2018.
The case fits into a broader trend of brand protection in Asia – German Stihl obtained nearly a million dollars in compensation in China for counterfeit chainsaws. In Poland, unlawful use of a mark carries a penalty of up to two years in prison and a high fine, although most disputes end in settlement.
