ITC rules in favor of Deere: at issue were infringement of Deere's green and yellow trademarks and gray market distribution of forage harvesters and telehandlers.

In January 2003, Deere & Company ("Deere") filed a complaint with the International Trade Commission ("ITC") alleging illegal importation from Europe and China of goods infringing its famous trademarks registered with the United States Patent and Trademark Office. Deere's federal trademark registrations at issue were for the JOHN DEERE trademark, the leaping deer trademark and its three trademark registrations for aspects of its green and yellow color scheme on its agricultural products.

Two classes of infringers, known as Respondents at the ITC, were named in the complaint. First, Deere alleged that Chinese manufacturers and their US importers and distributors infringed Deere's green and yellow trademarks by importing green tractors with yellow wheels and yellow stripes on the hood into the US for sale to US consumers. Second, Deere alleged infringement by European exporters and US importers and distributors of gray market John Deere forage harvesters and telehandlers designed for the European market but sold in the United States.

The matter was tried by Deere's counsel, Burns, Doane. Swecker, and Mathis of Alexandria, Virginia in September and October 2003 and the .judge issued his opinion in January 2004.

All of the Chinese manufacturers and their US importers agreed to cease their activities by settlement and consent order, with the final Chinese manufacturers agreeing to settle on the second day of trial. The gray market issues were adjudicated at trial.

In his January 2004 opinion, the judge found infringement by all of the gray market respondents. The .judge based his finding on the voluminous documentary evidence and witness testimony submitted at trial. He found that them are some 13 material differences between the trademarked North American version forage harvesters and telehandlers authorized by Deere for sale in the United States and the trademarked European version vehicles sold by Deere in Europe but imported into the United States without its consent. This finding of material differences is sufficient for a finding of infringement in the ITC. Some of the differences the judge relied on included physical differences such as lighting configuration, safety decals, travel speed alarms and operators' manuals, and non-physical differences such as warranty coverage and Deere's product improvement program.

In his opinion, the judge recommended that the ITC issue a general exclusion order to customs stopping all importation of John Deere European forage harvesters into the United States without Deere's consent, including by parties not named in the complaint. The judge further recommended that the respondents in the case who still have any inventory of Deere European forage harvesters be ordered to cease and desist their sales activities. Concerning telehandlers, the judge recommended that the two parties known to be importing Deere's European version telehandlers into the United States be stopped from importing them in the future. Thus, all aspects of the case were resolved in favor of Deere by Burns Doane Swecker & Mathis.

The respondents asked the ITC to review the judge's determination. The ITC upheld the judge's decision, and issued orders implementing the relief recommended by the judge. The ITC's ruling became final on July 16, 2004.

Bassam N. Ibrahim is Partner, Trademark & Copyright Practice Group Leader at the law firm of Burns Doane Swecker & Mathis, Alexandria, Virginia.

John Deere responds to "gray market" situation

John Deere re-emphasizes that "gray market" machinery does not necessarily meet safety and customer requirements of the US market. In May, the US International Trade Commission (ITC) moved to stop the importation of certain gray market machines.

Gray market machines are products that were designed for use in other countries and are then imported into the US without the manufacturer's authorization. Specifically for John Deere, third party representatives are selling self-propelled forage harvesters and telehandlers that were originally designed for the European market to US dealers, independent retailers and end users.

The ITC ruled it illegal for importers to sell these European-version machines in the US market. Customs officials have been ordered to stop these machines at the border and not to allow them to enter the US.

In addition, because these products are not authorized for sale in the US, the machines do not qualify for warranty under US guidelines. In Addition, these machines are designed with specific product features for the European market, so some parts and attachments are unavailable in the US.

"John Deere and John Deere dealers have always valued customer safety and satisfaction," explains Doug DeVries, Senior Vice President, Ag Marketing, Deere and Company. "Our customers rely on John Deere to manufacture equipment that provides great value, helping them to be more productive and profitable.

Because gray market machines are not built to US specifications, John Deere cannot endorse the importation of gray market machines to the US. We encourage customers to work with their local John Deere dealer for the right product to ensure the highest level of customer satisfaction, service and support."