TRADEMARK AND PRODUCT PIRACY HARMS MANUFACTURERS, DEALERS AND CUSTOMERS, BRASH PLAGIARISM AND POOR QUALITY FORGERIES ARE NOT JUST DANGEROUS BUT ALSO A GIGANTIC COST FACtOR: THEY EAT UP CAPITAL AND JOBS. NO MANUFACTURER OF POPULAR BRAND PRODUCTS IS SAFE FROM FORGERIES—INCLUDING MAHLE. BUT THE COMPANY HAS ITS WAYS AND MEANS OF PROTECTING ITS OWN TRADEMARKS AND THE BRANDS IT SERVES.
| Deliberate deceipt of consumers by imitating Knecht and MAHLE Original filters: the firm of “Bavaria Filter Werke” doesn‘t exist … and both manufacturers are certainly not“OEM”. |
Spare parts are important for the function, roadworthiness and value of vehicles. If a part is of a poor material quality and workmanship there is a risk to road safety. This is easy to understand in the case of spare parts that are relevant for safety such as brake linings. But other components also hold safety risks: broken engine valves can lead to an abrupt engine stop. Poorly made fuel filters that leak constitute an explosion risk. Engine oil filters with an inadequate filter performance are an incipient risk: they do not keep dirt particles out of the engine oil, thus increasing wear and the risk of serious consequential damage.
TRADEMARK PIRACY: AN OPTICAL ILLUSION
The automotive parts market, like almost every other market, is riddled with products whose name or packaging design copies that of famous brands to suggest a product quality to customers that is very often not given. In such cases experts talk of trademark piracy. This sound harmless, almost like a trivial offence. But the consequences and dangers are far-reaching—and the damage produced by counterfeit products is huge. This is why legislation offers manufacturers of the original products ways to combat trademark piracy and forbid the illegal use of their trademarks or imitation of their packaging.
PATENTS—PROTECTING IDEAS AND INVESTMENTS
The development of new automotive parts entails big investments that have to be recuperated through the price of the product to allow future research and development work. MAHLE thus protects its new developments against illegal copies through patents: other manufacturers may only copy these products after 20 years—or they have to acquire a licence. The investment costs can thus be recuperated over a longer period of time and do not have to be earned over a shorter period through the product price.
TRADEMARK OR PATENT INFRINGEMENT?
If MAHLE becomes aware of a competitive or pirated product, for example through tip-offs from dealers, representatives or findings on the Internet, we initially obtain a sample—the evidence. This is sent to the MAHLE patents department which checks whether it is a case of trademark infringement. This is the case if “the outer appearance is such that it gives the impression“, that it is a MAHLE product. A patent infringement is much more difficult to check. The OX 171 oil filters produced by MAHLE, for example, are protected by at least four patents. A patents expert now checks step-by-step whether the product in question matches the wording of the patent specification.
THE CONSEQUENCES FOR PIRATES: CHANGE, BUY—OR PAY THE PENALTY
If MAHLE discovers a trademark or patent infringement it initially tries to reach an amicable agreement with the perpetrator. The product is then either changed so that it no longer infringes a patent or it is purchased directly from MAHLE in future. If an agreement cannot be reached the defendant has to reckon with the consequences: compensation for damages, reimbursement of costs and a cease and desist notice. If the defendant did not manufacture the counterfeit product himself but purchased it elsewhere he must fulfil his duty to provide information and tell us who the supplier is. Of course, there are also cases where the defending dealer himself is the victim of deceit. In this case the dealer can claim compensation for damages from his supplier—which is easier to enforce with the aid of the cease and desist notice against the supplier secured by MAHLE.
FIGHTING CRIME AT ITS ROOT
Determining the source of counterfeit products is one of the most important instruments in the battle against trademark and product piracy. Knowing which wholesalers or manufacturers bring or want to bring patent or trademark-infringing products onto the market helps put a stop to the actual perpetrators of product counterfeiting and therefore protects the market—as well as dealers, workshops and drivers—against trademark and product piracy. In order to keep counterfeit products off the markets MAHLE can also enlist the help of the customs authorities and have suspect products confiscated at the borders—by means of the so-called seizure of goods at borders proceedings. Counterfeit products from overseas especially can hence be confiscated and destroyed.
 | A copy of the OX 171 with “Pin”—and two infringements of MAHLE patents: the small sealing ring is not fitted (it is enclosed loosely with no instructions as to how and where it should be fitted) and the seal is adapted to the end plate. |