Hyundai settles Genesis trademark case with Toronto clothing store

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Hyundai Motor Group has dropped its legal challenge against a small Toronto menswear store over a trademark for the word Genesis, and both companies will use the name going forward.

The Globe and Mail reported in February that the South Korean auto maker had spent more than four years trying to expunge the trademark held by the small clothing shop since 1987.

After the story was published, Hyundai reached out to the Genesis store to settle the dispute. In July, the settlement was finalized and the company filed with the Federal Court to discontinue its lawsuit.

John Dimatteo, co-owner of the store, said both parties will be allowed to use the name Genesis, and Hyundai has agreed not to challenge their trademark again.

“A small business like us, it put us through some trying times,” Mr. Dimatteo said of the years-long fight. “But in the end, what we really wanted was to continue doing business as Genesis, for our customers, after being there 50 years. That’s what we were after, and that’s what we got.”

The small business spent tens of thousands of dollars on legal fees in the dispute. Financial terms of the settlement were not disclosed, but Mr. Dimatteo said: “We are happy with what they did for us.”

Hyundai, through its subsidiary Genesis, said it was happy to settle the case.

“We are pleased that an arrangement has been reached and that this situation has been resolved in a manner that is agreeable to all parties involved,” Genesis Motors Canada director Eric Marshall said in an e-mail.

The Genesis clothing store was founded in 1973 by John’s late brother Gene to sell high-end men’s fashion in Toronto’s Corso Italia neighbourhood. The shop sells items made in Italy, some of which are branded with the store’s name.

In 1987, the shop secured a trademark for the name Genesis for certain men’s clothing items such as suits and ties. There are more than 200 active trademarks that include the word Genesis, according to the Canadian Trademarks Database, which are registered for uses from bottled water to firearm targets.

Gene Dimatteo sold the clothing store to John and long-time employee Sergio Genovese in late 2016. Around that time, Hyundai brought its line of Genesis luxury cars to Canada and applied for trademarks, including to put the name of the car on clothing items.

A law firm working for Hyundai began to challenge the Genesis menswear trademarks in 2018. The clothing store won a partial victory at the Trademarks Opposition Board, which upheld most of the trademark uses, while striking a few clothing items from the list of uses.

Hyundai’s law firm, Lavery de Billy LLP, appealed to the Federal Court. A judge was set to hear the case in February, but the hearing was postponed as the parties began settlement talks. Lavery filed a notice of discontinuance with the court on July 4, and the settlement was finalized later that month.