Protect against imitations and counterfeits

Jan. 16, 2008
Knock-offs can be tough to take off a global market.

Rotork Controls had been working in China for about 10 years when its sales staff learned in 2003 that a firm called Autork Digital Apparatus was selling imitations of U.K.-based Rotork’s IQ Series actuators, and even using a catalog featuring photographs of genuine Rotork actuators. Then things got worse.

Graham Ogden, Rotork’s R&D director, says his 50-year-old company tried to get Shanghai-based Autork to stop its selling activities, but found this to be very difficult.

“This is because China’s Administration for Industry and Commerce (AIC) bases its enforcement on trademark infringement, but can’t prevent imitations sold under other company names, particularly when the infringer has registered its name themselves,” says Ogden.

As far as Autork is concerned, Rotork presently has several intellectual property lawsuits moving through the Shanghai People’s Court of China, but these can be hard to prosecute, especially if the counterfeiters have registered their own trademarks, and pretend to be engaged in lawful competition. Then things got worse again – just before getting better.

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Before the opening of a Netherlands-based tradeshow in late 2004, Rotork was notified that Autork was going to exhibit its imitation actuators. Ogden says Rotork appealed to the Court of The Hague, which granted an ex parte action. This allowed it to secure an injunction, and have Autork’s products seized as the event began. Subsequently, the court ruled in April 2007 that Autork was guilty of slavish imitation, breach of copyright, violating design rights of Rotork’s actuators and infringing Rotork’s trademark.

The court ordered Autork to immediately stop infringing Rotork’s proprietary rights throughout the European Community, and to remove infringing product from storage addresses, distribution points and customers. Meanwhile, Autork reportedly continues to be active in some parts of China.

In a statement, Rotork urged its customers and users to avoid inferior imitations of its products, which haven’t been subjected to the same level of third-party approvals and certifications. “We offer the same advice to all valve and actuator users — be wary of what you buy and from whom you buy it,” stated the company.

As a result of its experience, Ogden reports that the only way to have any protection against imitations and counterfeits is for manufacturers to register designs, trademarks, copyrights and patents in whatever country it plans to do business. In China, this means registering trademarks, making a required check of the name’s translation and pronunciation in Mandarin, employing a trademark watch service to advise of similar registrations, and checking on the Internet to see if a planned trademark has already been registered by someone else.

In the U.K., design rights are granted automatically for a limited period, although in both Europe and the U.K., manufacturers can make formal registrations, which may give stronger protection against slavish imitation. Because automatic protection isn’t available in other parts of the world, he suggests checking on the local country’s intellectual property laws, and perhaps filing 3-D design registrations in those regions.

“Action can be taken against infringement in other nations, but manufacturers must determine what rights they have there, and register their intellectual property,” says Ogden. “End users shouldn’t buy a device or components unless they’re sure where it came from, and they need to understand the entire supply chain between where a device was built and their plant. If you can completely trace a product back to its manufacturers, then you can be as sure as possible that you have the genuine one you wanted.”

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