Florida-based aftermarket sunroof supplier Donmar Enterprises is involved in a spat with Nissan North America over the trademark ‘Skyroof’, according to a statement from Donmar.
Donmar said that Nissan launched the 2000 Xterra sport utility vehicle in 1999 with a ‘flip up skyroof’ option. However, the ‘Skyroof ‘ mark had been in use by Donmar since 1985 and, in 1989, the company was granted a federal trademark.
The statement said Donmar resolved the conflict in February 2001 by granting Nissan North America and Nissan Jidosha Kobushiki Kaisha a licence to use the Skyroof trademark on model year 2000 and 2001 Xterra vehicles.
That licence expired in August 2001, Donmar claims, and, in the licence agreement, Nissan expressly agreed to deliver a notice, copied to Donmar, to all affiliated entities notifying them that the term ‘Skyroof’ was not to be used on vehicles after the 2001 model year, and that a different term would be used on subsequent model year vehicles.
“To date, Donmar has not received a copy of such notice, and believes that Nissan’s failure to issue such notice led to 2002 and newer model Nissan Xterra vehicles being advertised with the “flip up skyroof” feature,” the statement said.
Donmar also claims that, beginning with model year 2002, Nissan adopted the term ‘Skyroof’ to describe the sunroof feature on their X-Trail SUV and also launched the term ‘Skyview Roof’ to describe a new sunroof feature for the 2004 Maxima and Quest vehicles. Donmar claims to have evidence indicating that Nissan dealers, the media “and even consumers have called Nissan’s new Skyview Roof a ‘Skyroof’.”
Donmar believes that Nissan’s use of the ‘Skyroof’ and ‘Skyview Roof’ terms are in violation of the terms of the licence agreement and its trademark rights and in June 2003, sued Nissan in federal court.
Donmar said it is seeking both damages and injunctive relief for breach of contract and trademark infringement in the ongoing suit.
