When David Longfield took over as head of Solo Inc.'s domestic operations three years ago, an increasing number of Chinese counterfeits of Solo's injection molded sprayers were showing up in the U.S. So the company decided to step up its fight to protect a key product.
Since then, Solo has taken a more aggressive position at lawn and garden equipment trade shows and in legal actions against what it said are importers of illegal copies in the United States and Europe. It has prevailed in 24 legal actions in the U.S. Now, Longfield said, Solo is considering making a formal complaint to the U.S. government that is designed to increase pressure on the Chinese manufacturers.
At issue for Solo is protecting what it says is the best-selling backpack sprayer model in the United States, its Model 425. The U.S. market is currently the firm's largest for such products.
So far, he said Solo can claim some success, at least anecdotally. An industry trade show in Kentucky that three years ago had more than half a dozen illegal copies of the PE sprayer systems on exhibit, this year had just one that Solo considered an illegal copy, Longfield said in a recent interview.
But the company also admits that it has not been as successful at targeting the Chinese counterfeiters directly, contenting itself with challenging the importers.
The issue gained notice in November when Solo secured court orders to have counterfeit sprayers seized from the booths of two Chinese firms at the Agritechnica 2007 agricultural equipment trade fair in Hanover, Germany. That followed a similar Solo action in May against one of those same firms at the National Hardware Show in Orlando, Fla.
The two firms - Farmate China in Taizhou and Zhejiang Shixia Sprayer Co. Ltd. in Huangyan - did not respond to e-mail and telephone requests for comment.
Longfield said Solo's efforts have educated him and convinced him that companies can be aggressive in protecting intellectual property and trademarks. Before that, he said, he did not know that common law provides trademark protections in the U.S., for example, sometimes even for unregistered trademarks. Solo has several trademarks on its products, such as ornamental ribs that it has used for 40 years and that visually identify a Solo-brand product. The ribs can be used legally to protect the product, even though they don't relate to function, Longfield said.
``A lot of companies are not aware of the rights they have,'' he said. ``We have a very competent IP attorney who has really educated me.''
Because firms must be very aggressive in defending themselves in intellectual property lawsuits, Longfield urges them to bring in specialized IP lawyers rather than to rely on general counsel.
``If other companies can prove you are aware of infringers and do not attempt to stop them, you can lose your trademarks,'' he said.
Solo has brought 24 lawsuits or legal threats against importers of counterfeit products in the U.S., and has prevailed in all of them. In every case, the product was manufactured in China, he said. In Europe, Solo has been similarly aggressive in going after importers, although company officials say it's still tough to target the Chinese manufacturers directly.
``Access to Chinese manufacturers of copied product continues to be the problem,'' said Nils Fock, marketing and distribution manager for Solo's German parent, Solo Kleinmotoren GmbH of Sindelfingen, in a statement. ``We can move against importers of their product in Europe, and we have made no hesitation in doing so.''
Solo is considering filing a formal Section 337 complaint of infringement with the U.S. government, which would bring U.S. government investigators to China and significantly complicate exports for firms judged to infringe. But he said it wants to see what happens in the marketplace before it takes that costly and complicated step.
Longfield said it has been difficult to estimate economic harm from the counterfeits.
The privately held firm, which employs fewer than 400 worldwide, does not disclose sales. Although Longfield said U.S. sales have been growing, he believes that copied products have taken market share in Asia. The biggest harm, he said, may be to the firm's reputation, if consumers think that the poor-quality counterfeit goods have come from Solo. Solo boasts that its sprayers can do 2 million strokes without servicing, while some of the infringing Chinese products began to leak after only a few thousand strokes, according to Solo's testing of the sprayers.
Solo scours product catalogs for signs of infringement. It becomes suspicious if orders from a customer that is otherwise growing suddenly drop off. Such scenarios can create uncomfortable situations with Solo customers that are also buying the counterfeit products, but thus far amicable solutions have been reached, Longfield said.
``It is a little awkward,'' he said. ``We don't want to sue them ... [but] if it costs us customers, we will lose the customers.''