Tenneco Automotive Inc. didn't waste time filing suit against four companies it found marketing alleged counterfeit bushings during the Automotive Aftermarket Products Expo the week of Nov 3.
The supplier and its subsidiary, Pullman Co., filed a lawsuit Nov. 7 against Altezza Co. Ltd. of Taiwan, Keystone Co. Ltd. of South Korea, Progressive Gear Industries (P) Ltd. of India and Sheng Mhau Industry Co. Ltd. of Taiwan in the U.S. District Court for the District of Nevada.
Tenneco is claiming unfair competition and false designation of origin under the Lanham Act, which spells out U.S. trademark laws. The company wants the court to order the defendants to stop using the trademarks and to pay unspecified damages.
Only one of the defendants, Progressive Gear, could be reached for comment, and the company denied it made or is marketing counterfeit goods. None of the firms have U.S. operations.
The four Asian companies not only displayed products with Tenneco's tradenames, but also said, when asked, that they manufactured the parts, claims Tenneco Chief Engineer Jim Lewis.
Altezza was displaying a bushing with Clevite's brand name and "made in Mexico" stamped on it, "when clearly they were not made in Mexico," he said. The company told him its sole plant is in Taiwan, he said. Tenneco does produce components in Mexico. Mr. Lewis said he believes Altezza copied Tenneco's Mexican-made products.
"Part of what we're dealing with here is other people are trying to enter the market by using Tenneco's tradenames," he said. "Technically, there's not a lot we can do when they copy our parts, but here's a case where they were utilizing our name, and that's illegal."
Tenneco is concerned about counterfeit parts for several reasons, Mr. Lewis said. If they're inferior products, they obviously are going to damage the supplier's brands. Warranty claim costs also are a consideration, as are lost sales to the counterfeit manufacturers, he said.
"We have potential customers walking the show, visiting these booths and looking at products on display with Clevite and Harris on them," Mr. Lewis said.
In an e-mail response to questions, Progressive Gear said a potential customer from Mexico visited its booth during the show and left the suspected counterfeit bushings so the company could evaluate them. Progressive said the unnamed man who left them said he currently is purchasing those parts from an Indian company but is looking for another manufacturer to make them at a lower price.
"All we can say is that we are totally telling the truth, otherwise we would have (hidden) the parts on seeing Tenneco executives," Progressive said. "If Tenneco people could get imports records, they could see that the original manufacturer of those parts is still selling those parts."
Tenneco officials said the suspected bushings were not only lying on the table at Progressive's booth, but also tacked onto a pegboard wall as part of the display.
Tenneco's Pullman affiliate licensed the Clevite name from Dana Corp. in 1988 for automotive bushings and other components, according to the lawsuit. As required by its licensing agreement, Tenneco notified Dana of the alleged counterfeit products and obtained written consent from Dana to enforce the Clevite trademark.
Although Tenneco has been using the Harris trademark for more than 47 years on automotive bushings and elastomers sold worldwide, it didn't file a trademark application to register the name with the U.S. Patent and Trademark Office until Sept. 30.
Tenneco can work with U.S. Customs officials to keep the alleged counterfeit parts from being imported in the U.S., said Anat Hakim, a partner with the Washington office of Foley & Lardner.
"In terms of going after them in their own countries, it is a little more difficult, but there are federal statutes that deal with companies abroad," she said.
According to Altezza's Web site, it has three production lines at its Taiwanese operation which turn out brake system components, constant velocity joints, water pumps, body parts, chassis parts, steering components and other unnamed accessories.
Progressive Gear makes tie rod ends, link assemblies, upper joint crosses, brass bushings, clutch forks, gear box flanges, water pump parts and crown wheel parts for trucks and bushings. Sheng Mhau's primary products are control arm assemblies with bushings in them.
Keystone sells link assemblies, bushings and rubber mounts, according to its Web site.