CIT Allows Liquidated Damages Against Importer That Used UL Mark Prior to Approval
An importer is liable for liquidated damages for its failure to redeliver butane canisters that CBP found bore counterfeit Underwriters Laboratory trademarks, the Court of International Trade said in a decision released publicly Jan. 9. ICCS USA said the products had only minor differences from products it had already registered with UL, but the UL contract required new products to be registered even if they bore only superficial differences, CIT said.
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ICCS had entered into a UL multiple listing agreement with its supplier, One Jung Can Mtf. Co. Ltd., that allowed it to import products certified by OJC under its own ICCS name. The multiple listing agreement only listed ICCS’s “US BUTANE” model, and when ICCS imported “PREMIUM” model canisters in January 2017 CBP placed a manifest hold on the entry. CBP would release the goods after several weeks, but one month later requested their redelivery. ICCS redelivered only 29,008 of the canisters, which were seized by CBP. The agency ordered ICCS to pay $41,412 in liquidated damages on the other 27,608 canisters ICCS did not redeliver.
In the meantime, that February, ICCS added the “PREMIUM” model to its multiple listing agreement. ICCS argued that, despite its late registration, the requirement to list the new model was only a “record keeping requirement,” and the placement of the UL mark on the canisters did not amount to trademark infringement. It also said its PREMIUM line had only superficial differences from OJC’s MEGA-1 brand product, which was listed with UL.
CIT disagreed, finding ICCS’s agreements with UL required that every product be listed and approved by UL before the certification body’s marks could be used on them. Those agreements only allow products to be added to the multiple listing if the differences are superficial, and forbade any use of UL marks “on any goods or their containers or packaging ... [e]xcept as otherwise expressly authorized. ... Because ICCS did not have express authorization to display UL’s certification mark on the PREMIUM model on the date of importation, and because UL’s authorization that occurred after the date of importation was not retroactive, the certification mark was spurious and, therefore, counterfeit,” CIT said.