CAFC Finds UL Must Approve Certification Prior to Entry, or UL Marks Counterfeit

Importation of a product bearing an Underwriters Laboratories certification mark before UL approves that specific product for certification is trademark infringement, and such goods are subject to forfeiture, the U.S. Court of Appeals for the Federal Circuit said in a March 11 decision. Affirming a 2018 ruling from the Court of International Trade (see 1901100034), the Federal Circuit found ICCS, though approved to put UL marks on some of its imported butane canisters, infringed UL’s trademarks when it imported similar canisters prior to UL’s approval of its multiple listing request.

ICCS, an affiliate of China-based One Jung Can, already had approval to put UL’s certification marks on its “MEGA-1” model canisters. But at the time it imported some similar “Premium” model canisters in January 2017, it had not yet updated its listing with UL with the new model. CBP seized some of the Premium canisters, and eventually ordered all of them redelivered. It ordered ICCS to pay $41,412 in liquidated damages for the canisters it was unable to redeliver. ICCS protested, but CBP denied the protest after UL declined to retroactively authorize its marks. ICCS filed suit.

The trade court had backed CBP, 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. The Federal Circuit agreed. The terms of ICCS’s contract with UL “authorized ICCS to display UL’s certification mark on any ICCS ‘models’ that are the same physical product as OJC’s MEGA-1 canister, but only after UL verifies that any differences between ICCS’s model and the MEGA-1 ‘basic product’ are merely ‘superficial.’” At the time of importation, UL had not authorized the use of its marks on the “Premium” model, CAFC said.

That ICCS was subsequently able to obtain authorization doesn’t matter, the Federal Circuit said. “It is of no moment that, post-importation, UL approved ICCS’s request to add the PREMIUM model to UL’s multiple listing services, because that occurred after the date of entry on January 19, 2017, and the counterfeiting analysis is focused on the time of importation,” it said.

ICCS argued that the differences between the Premium and MEGA-1 model were only superficial. But that is for UL, not ICCS, to determine, CAFC said. “Common sense suggests that if an importer could unilaterally choose to use a certification mark on new models without first obtaining consent from the trademark owner, that would significantly compromise the trademark owner’s ability to police the mark,” it said. And CBP “had no way of ascertaining whether the PREMIUM model was the same physical product as the MEGA-1 basic product (or the US BUTANE model), without UL having first made that determination,” the Federal Circuit said.

(ICCS USA Corp. v. U.S., CAFC # 19-1561, dated 03/11/20, Judges Newman, Moore and Chen)

(Attorneys: Elon Pollack of Stein Shostak for plaintiff ICCS USA Corporation; Jamie Shookman for defendant U.S. government)