ROME, Ga.—A judge in the U.S. District Court for the Northern District of Georgia has partially granted Camso U.S.A. Inc.'s motion to stay pending arbitration in a trademark infringement case involving off-the-road tires.
OTR Wheel Engineering Inc., F.B.T. Enterprises Inc. and Blacksmith OTR L.L.C. filed suit against Camso in the Georgia court. OTR and F.B.T. are owned by Fred Taylor, and Blacksmith is a 50-50 joint venture launched originally by Taylor and Swan International. Camso became the successor in the joint venture when it acquired Swan, according to a complaint filed Aug. 15.
Swan and Blacksmith had an agreement in which Swan agreed not to compete with Blacksmith's business in the U.S., according to the complaint. As the successor in the joint venture, Camso was obliged to honor that agreement, it said.
However, Camso is selling various OTR industrial tires in the U.S. using F.B.T.'s Outrigger and Stabilizer trademarks, according to the suit.
"Camso's use of the Outrigger and Stabilizer marks is without the authorization or permission of any of the plaintiffs," it said. "Moreover, Camso's unauthorized use includes the unauthorized sale of Outrigger and Stabilizer branded tires in competition with the business of Blacksmith OTR."
The plaintiffs sought preliminary and permanent injunctions against Camso; seizure of all allegedly infringing tires made by Camso; all the profits Camso made from selling the infringing tires; and damages and attorneys' fees.
In response, Camso sought arbitration, and filed a stay pending arbitration with the Georgia court Sept. 26.
In an Oct. 25 ruling, Senior Judge Harold L. Murphy granted Camso's motion in regard to trademark claims.
"While Camso asserts in its brief that arbitration will resolve whether (Blacksmith) is the true owner of the trademarks, it is more accurate to say that arbitration will resolve Camso's rights to bring a separate lawsuit enforcing (Blacksmith's) ownership," Murphy wrote.
"Camso's requested relief, if granted, could bring this action to a halt or give rise to parallel litigation over ownership of the trademarks," he wrote.
However, Murphy declined to stay Blacksmith's breach of contract claim.
"For purposes of any claims under the non-competition agreement, the question is not whether Camso unlawfully competed using trademarked tires," he wrote. "What matters is whether Camso unlawfully competed using any tires whatsoever."