Wednesday, 11 August 2021 18:47

SATA’s Fight Against Knockoffs and Counterfeits


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SATA is a leader in professional paint application and the manufacturer of the well-known spray guns which set a precedence in the market.

Because of this status, some companies started producing counterfeits and knockoffs of SATA spray guns more than 20 years ago. Since then, SATA has fought against these imitating products and their manufacturers.


SATA said these companies are usually based in Asia, mainly in China.


SATA’s intellectual property representative provided background on one of his favorite cases the ITALCO case.


According to the SATA representative, some years ago, ITALCO launched a website that was a near-identical copy of SATA’s previous website. He had reason to believe a Chinese company called AUARITA was behind the brand and the website.


AUARITA is a Chinese manufacturer of cheap spray guns, and something SATA calls an “old friend."


“I have to say that we had already taken several actions against this company in China,” said the representative. “Hence, the ‘old friend’ status.”


Later they found several resellers in the U.S. were selling ITALCO branded products that infringed on SATA’s trademarks and patents.


“We took actions against these resellers; most of them were smart and stopped selling the infringing products, but that’s a different story,” said the representative.


Through these resellers and other sources, it was confirmed AUARITA was the company behind ITALCO, because the resellers had...

...ordered the infringing products directly from AUARITA.


“The clear evidence of active solicitation of United States customers was the straw that broke the camel's back,” he said. “Now we were on the hunt once again.”


First, SATA had to identify the extent of the infringement of their intellectual property. They identified more than 15 different trademark infringements and more than 15 different design patent infringements by ITALCO branded products---more than 30 infringements total.


Next, SATA entrusted their attorney with the complaint against ITALCO as well as AUARITA. To bring the suit, SATA had to serve the summons at ITALCO’s official U.S. address. AUARITA (or ITALCO) was proving to be elusive as the addresses listed were fake.


In response, SATA’s lawyer filed a motion to serve AUARITA via email. The court allowed it.


“After the complaint was served, ITALCO/AUARITA buried its head in the sand and did not defend itself. That showed us the company knew that it is a waste of money to defend in this clear case of willful infringement and counterfeiting,” he said.


In the end, SATA received a judgement of more than $10 million in damages. They got a refund of their attorney fees and a permanent injunction prohibiting either ITALCO or AUARITA to offer, sell or advertise the infringing products. Additionally, they were successful in shutting down the website until the infringing products were removed.


“Now what about the money?” said the representative. “Of course, it is difficult to get the payments from a Chinese company without assets in the U.S., but due to the judgement it will impossible for ITALCO, respectively AUARITA, to do business in the U.S. As soon as they have assets in the U.S., we will be able to seize these assets.”


Is this the end of the fight against ITALCO/AUARITA? No, as SATA has...

...pending cases in other countries as well. Furthermore, they monitor all their "old friends" very closely and are consistently checking to see if the upcoming models infringe their intellectual property.


“If ITALCO learned their lesson and stopped copying our products,” said the representative, “everything would be fine. But taking the past into consideration, we will have to keep a close eye on them.”


In addition, there are a few resellers left who still order infringing ITALCO branded products.


“To clarify, it is also illegal for the resellers to buy or sell infringing products,” he said. “We have our ways to find out who orders, when, how many times and much more. We also have a big network from which we receive our information and are very experienced in fighting counterfeits. If we became aware of such a reseller, they have to reckon with painful legal and financial consequences.


"For all out there, I can only recommend not to order infringing products from ITALCO/AUARITA or any other copycat; otherwise you have to worry that we’ll come knocking on your door.”


Unfortunately, there are always other counterfeiters, so SATA will continue hunting. This is not the only thrilling case of SATA’s fight against knockoffs and counterfeits. More will be published in the future.


Source: SATA


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