This article is the final in a series of five that examines how ZEN-NOH and other gray market tractors came to be in such great numbers in North America and other countries. Look for Part 1, Part 2, Part 3 and Part 4 as well.
Last we left off, Gamut Trading had registered the ZEN-NOH trademark as their own and began importing tractors from Japan into the United States. While technically not against the court orders it was against the spirit of the court’s decision. Kubota brought another lawsuit against them in fall of 1998 and won a judgment in excess of $2.3 million US. Importing gray market ZEN-NOH or Kubota tractors into the United States was dead.
What Happened to Mike Wallace?
After going round 1 with Kubota and losing, Mike Wallace went looking for redder pastures. He continued to import used compact diesel tractors from Japan, dropping Kubota and importing mostly Yanmar tractors. In September 2002, he reacquainted himself with his old buddies at Gamut Trading. Since they had now been sued into the stone age by Kubota’s legal department, they did not have much need for the ZEN-NOH name anymore.
Wallace asked if he could become an authorized user of Gamut’s trademark. In 2003, Gamut Trading and Wallace became business partners once again, this time in the ownership of the ZEN-NOH trademark, name, stylized print and logo!
Wallace did not have a lot of time left to savor that trademark co-ownership. By mid 2003, plans were already floating around the boardroom table at the Yanmar Motor Corporation in Japan, to form a new US subsidiary, the Yanmar Diesel America Corporation. The purpose of this new venture was to reestablish the Yanmar brand in North America. This would mean new franchisees, new parts dealers, new generator and engine sales and a complete relaunch of the entire Yanmar compact tractor line-up. Yanmar had actually departed the market about 2 decades earlier.
Yanmar had a little unfinished business to tidy up before offering franchises for sale in the United States. In August of 2004, Yanmar brought a Consent Order, Judgment and Permanent Injunction in the US District Court for the Eastern Division of California against, Mike Wallace and Wallace International Trading, barring him from ever importing, selling, and marketing, being involved in or around a Yanmar tractor, a ZEN-NOH Yanmar or any other type of Japanese tractor! We have a copy of that injuction for your legal reading pleasure.
Yanmars lawyers did all their homework as well! Since so much case law now existed regarding trademark infringement on Japanese imported tractors, a history of hood labels being changed, calling a tractor a ZEN-NOH model, falsifying importation documents etc., that Yanmar had no trouble making Mike Wallace go quietly into the night, forever.
What Happened to Ron and Darrel?
After going round 2 with Kubota and being subject to large fines, Gamut Trading went out of the tractor importation business.
It is not known where Darrel landed after the dust up with Kubota, but his brother Ron DePue had owned operated and closed down, Homestead Tractor and Feed and may have had to sell or close it as payment to settle with Kubota. Ron is currently owner of Just Tractor Parts located in Apple Valley California. He is listed as the authorized distributor for Hercules Aftermarket ROPS (which coincidentally has models available for both Kubota, ZEN-NOH and Yanmar tractors!)
What Happened to the ZEN-NOH trademark?
The ZEN-NOH trademark, as registered in the United States, lapsed on February 14th 2009. Gamut Trading decided not to renew for obvious reasons. What this means is that someone else could grab that trademark and technically own that brand (and perhaps own the wrath of Kubota and Yanmar that comes along with it!).
Now that all the pieces of the puzzle are available, a timeline summarizes the events nicely:
ZEN-NOH agricultural cooperative is founded in Japan. Later grows to be the largest cooperative in the world with revenue in excess of $100 billion USD per year.
Kubota partners with ZEN-NOH to start producing ZEN-NOH branded equipment on its own assembly line.
ZEN-NOH registers its trademark in the United States.
Mike Wallace incorporates Wallace International Trading Co. in California.
ZEN-NOH’s trademark in the United States expires and is left unowned.
Wallace International Trading begins importing Kubotas from Japan by the container load.
Kubota dealerships start to notice cheaper, low hour Kubota equipment on competitive lots. Phones start to ring at Kubota corporate head office in Torrence California. Kubota files legal paperwork against Wallace International Trading.
Kubota wins trademark infringement case against Wallace International Trading and secures both general exclusion orders and cease and desist orders against Wallace and his distribution network.
Distributors in Wallace’s distribution network are told by the judge to export, dismantle, part-out or destroy their remaining inventory. Kubota lawyers cackle with glee. Muahahahhaaaa.
Gamut Trading, one of Wallace’s distributors, discovers that the ZEN-NOH trademark is available in the United States, applies for and receives the trademark rights.
Gamut Trading imports hundreds and hundreds of additional ZEN-NOH equipment from Japan into the United States. Rebranding of Kubota equipment to ZEN-NOH equipment “on the dock” is speculated.
Kubota files legal paperwork against Gamut Trading.
Kubota wins lawsuit against Gamut Trading for violating the terms of the original cease and desist order. Fines are levied at more than $2.3 million. Gray market tractor importation into the United States halts entirely.
Mike Wallace partners again with Gamut Trading to use their ZEN-NOH trademark to bring Yanmar equipment under that name into the United States.
Yanmar Company files legal paperwork and wins an injunction against Wallace International Trading, barring him from basically ever importing, selling, parting-out, looking at or sitting on a Yanmar again. Wallace is essentially sued into the stone age.
ZEN-NOH trademark quietly expires after Gamut Trading, now defunct, neglects to rewnew it.
OrangeTractorTalks publishes a complete history of how so many gray market tractors found their way out of Japan, and how Kubota used their legal might to smash the flood of inexpensive equipment arriving daily. Probably raising a few eyebrows at Kubota corporate in the process – luckily we’re not on their payroll!
The fallout from importing these tractors is still felt today. You can see evidence of it anytime you speak to certain dealerships or Kubota corporate alike. There is a general hostility toward those owners of gray market equipment and those that repair, service or provide parts for. It stems from these series of events – importing thousands and thousands of Kubotas from Japan, flooding the domestic market with high quality, low hour, less expensive models.
Can you blame Kubota for feeling a bit frustrated though? They came to North America and their L200 was an instant success! Things were looking up and they were going about their usual business for 20 years. Then, a few creative individuals got together and changed the game. It was not in Kubota’s plans to be competing with itself. This problem is something that Kubota continues to struggle with today and has served as an important lesson to other equipment manufacturers.
Mike Wallace, having been sued once by Kubota and another time by Yanmar, is definately not high on either company’s list of respected community members. That being said, he pioneered the idea of importing surplus compact tractors from Japan into the United States. He saw an opportunity, gathered suppliers and created a distributor network. Many others have followed his recipe but he was the first. You have got to give that in itself, some respect.
What Wallace started has had lasting effects, and not just for Kubota corporate or their dealership network. Anytime an owner of a gray market or ZEN-NOH tractor wonders where their equipment came from and how it managed to find its way to Tecumseh, Kansas, there is a good chance Mike Wallace had something to do with it.
Service Department Vic
Gamut Trading ZEN-NOH Trademark Application
USITC Kubota Exclusion Order
Kubota Corp V. Gamut Trading et al
Yanmar Company V. Wallace International Trading
ZEN-NOH and Kubota Part 1: A Partnership
ZEN-NOH and Kubota Part 2: Importation
ZEN-NOH and Kubota Part 3: Lawsuits
ZEN-NOH and Kubota Part 4: Loopholes