BIC Corp. and its New York-based vice president and general counsel, Steve Burkhart, are fired up over alleged knockoff lighters that are being made in China and imported into the U.S.
The French company with a North American headquarters in Shelton, Connecticut has filed a pair of trademark infringement complaints against the alleged counterfeiters and their stateside distributors before the U.S. International Trade Commission in Washington, D.C., and U.S. District Court for the Eastern District of New York in Brooklyn. The company has a factory in Connecticut that produces about 1 million lighters a day.
“It seems like we’ve seen the proliferation of one thing after another of counterfeit products entering the American marketplace,” Burkhart said. He added that BIC filed the suits not only as part of an effort to keep the lighters in question out of the country but also to draw attention to the issue of intellectual property theft.
“This is international business model-type stuff with factories and investments that blatantly infringe our IP. That’s what’s different,” he said. But he stressed that the timing of BIC’s action amid escalating trade tensions between the U.S. and China and the ramped up enforcement of trade secret theft enforcement actions, was “incidental.”
The complaints accuse the defendants of trademark infringement, trademark dilution, unfair competition, deceptive practices, false advertising and committing unlawful acts, including unlicensed importation. The suits seek to stop the importation of the alleged imitation lighters. BIC spent much of the past year building its suit for the ITC, which was filed Thursday, a day after the federal action was filed, Burkhart said.
The domestic distributors named in the suit are Arrow Lighter Inc. and the Milan Import Export Company, both of which are headquartered in California, and New York-based Excel Wholesale Distributors.
Arrow Lighter appears to be the biggest distributor among the three and has been importing lighters from factories in China for two decades, according to the company’s LinkedIn profile. The profile also states: “At Arrow Lighter, we are constantly striving for better. Quality and service always comes first, the smallest details are never neglected.”
Arrow Lighter is one of the largest lighter manufacturers in the world and produces more than 700 million lighters a year, according to the company’s website. An attempt to speak with a company representative was not immediately successful.
Also named as defendants are Zhuoye Lighter Manufacturing Co. Ltd., Wellpine Company Ltd. and Benxi Fenghe Lighter Co., Ltd.. The lighters in question are sold as MK, Tutu and Star brand names, according to BIC.
In preparing for the litigation, BIC hired experts to conduct surveys to determine whether consumers were buying the alleged imitation lighters and if they were confusing the products with BIC lighters. The complaints allege that the counterfeit lighters “create a likelihood of consumer confusion in the marketplace.”
The company also ran the competition’s lighters through a series of tests to determine whether they met U.S. safety standards, from checking the amount of fuel in the lighters and measuring flame height to determining whether the lighters cracked when dropped, and they failed, according to Burkhart, who said the lighters were dangerous.
“Yeah, they took the time and effort to build the mold that makes the lighter look like ours and they used plastic that looks like ours. Everybody’s familiar with the $25 Rolex watch. But this is different. This could hurt somebody,” he said.
Burkhart said he was still learning about the defendant distributors and their times to overseas suppliers, adding that he anticipated that other companies could be added as defendants as the discovery process unfolds.
BIC is being represented by Orrick, Herrington & Sutcliffe IP partner Peter Vogl, senior associate Christopher Cariello and managing associate Briggs Wright in New York.