The opinion of the court was delivered by: JOHN W. DARRAH, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiffs filed suit against Defendant, Luxury Motors, Inc.,
alleging trademark infringement and false designation of origin
and unfair competition in violation of the Lanham Act. Plaintiffs
also sought a preliminary and permanent injunction against Luxury
Motors' use of the Plaintiffs' trademarks. Luxury Motors seeks to
dismiss or stay the action pursuant to the doctrine of primary
jurisdiction or the Colorado River abstention doctrine.
A reading of the Complaint supports the following summary of
the alleged conduct of the parties.
Rolls-Royce Motor Cars, NA ("Rolls") is the sole authorized
distributor of Rolls-Royce cars in the United States and has the
exclusive right and license to use and control Rolls-Royce marks
for automotive use within North America pursuant to an agreement
with Rolls-Royce Motor Cars, Ltd. These marks include the
Rolls-Royce word mark, the "Rolls-Royce Badge," and the
"Rolls-Royce Monogram." The marks are distinctive, valid, and
enforceable and enjoy an exceedingly valuable reputation and
goodwill in the Untied States not only among purchasers of their
products but also among other members of the public at large.
In 1998, Rolls entered into a licensing agreement with Bentley
which granted Bentley a limited license for the automotive use of
Rolls-Royce marks during the life of the licensing agreement. At
midnight, December 31, 2002, the licensing agreement terminated,
leaving Bentley without any rights to continue to use the
Rolls-Royce marks. Also, from 1998 to December 31, 2002, Bentley
Motors, Ltd. produced Rolls-Royce passenger cars and distributed
them in North America. During that time, none of the Plaintiffs
had any ownership or affiliation with Bentley's manufacturing
Luxury Motors is an automobile dealer in Downers Grove,
Illinois. Luxury Motors entered into a 2002 dealer agreement with
Bentley through a subsidiary of Bentley. Neither Bentley nor its
subsidiaries have any connection to the Plaintiffs. Luxury
Motors' Dealer Agreement with Bentley, expressly stated that it
would expire on December 31, 2002, unless superseded by a new
dealer agreement with Bentley at an earlier date.
In early 2002, Luxury Motors submitted a proposal to Rolls
seeking to become an authorized Rolls-Royce dealer once
Rolls-Royce Motor Cars, Ltd. began producing the redesigned
Rolls-Royce Phantom for distribution in the United States. Rolls
did not accept Luxury Motors' proposal and did not select Luxury
Motors to be an authorized dealer of Rolls-Royce Motor Cars.
In February 2003, Luxury Motors filed a complaint with the
Illinois Motor Vehicle Review Board ("IMVRB"), seeking to have
Rolls tender a franchise renewal or otherwise comply with the
parties' franchise agreement. The complaint alleged that
Rolls-Royce violated the Illinois Motor Vehicle Franchise Act ("IMVFA") by failing to tender a renewal of
the franchise agreement without Luxury Motors' receiving a formal
notice of termination or nonrenewal. This complaint remains
pending before the IMVRB.
In March 2003, counsel for Luxury Motors received written
notice from Rolls that Bentley, and consequently Luxury Motors,
had no rights to use the Rolls-Royce marks. Notwithstanding that
notice, Luxury Motors continued to use the Rolls-Royce mark and
hold itself out as an authorized Rolls-Royce passenger car
On August 22, 2003, Plaintiffs filed the instant Complaint. On
October 28, 2003, the Court entered the parties' Agreed
Preliminary Injunction Order which enjoined Luxury Motors from
using or affixing Plaintiffs' trademarks and holding itself out
to customers that it was an authorized Rolls-Royce dealer.
Luxury Motors argues that the present case should be stayed
pursuant to the doctrine of primary jurisdiction.
The doctrine of primary jurisdiction is actually two doctrines.
See Arsberry v. Illinois, 244 F.3d 558, 563 (7th Cir. 2001)
(Arsberry). In its original form, the doctrine applies only
when an issue arises that is within the exclusive original
jurisdiction of the regulatory agency, although the agency's
resolution of the issue will usually be subject to judicial
review. See Arsberry, 244 F.3d at 563. In such a situation, the
suit is stayed and the issue is decided by the agency. Once the
agency decides this exclusive issue, the suit may proceed. See
Arsberry, 244 F.3d at 563.
Here, Luxury Motors has alleged before the IMVRB that because
Luxury Motors was not provided notice of termination of the
franchise agreement, as required by the IMVRA, the franchise
agreement remains in effect. The issue of whether the Defendants
failed to comply with the IMVFA is not within the exclusive jurisdiction of the IMVRB. See 815
ILCS 710 et seq. Accordingly, Luxury Motors' IMVFA claim does
not fall within the primary jurisdiction doctrine in its original
The primary jurisdiction doctrine has also been defined as a
doctrine that allows a court to refer an issue to an agency that
has specialized knowledge about the issue, even if the agency has
not been given exclusive ...