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Movers & Shakers: Chinese Court Sides With Oracle Lighting in Case Against Counterfeit Producers in China

Compiled by SEMA Editors

Oracle LightingOracle Lighting has announced that it has successfully defended its intellectual property rights regarding its Vector LED Grille System by winning its legal battle against a Chinese-based manufacturer of imitation products.

Chinese Court Sides with Oracle Lighting in Case Against Counterfeit Producers in China  

Oracle Lighting has announced that it has successfully defended its intellectual property rights by recently winning its legal battle against a Chinese-based manufacturer of imitation products.

“Shortly after we unveiled our Vector LED Grille System at a trade show in 2017, Chinese knockoffs began appearing,” explained Justin Hartenstein, director of product development at Oracle Lighting. “After nearly a year of work designing and developing this product, it was honestly heartbreaking to find knockoff products pop up online. I had seen this happen before to other manufacturers in our industry and decided that we were not going to stand for this blatant design theft. We worked with our IP attorney, Jeffrey Banyas of Edwin A. Sisson, Attorney at Law LLC, to develop and execute a strategy to take action against the overseas knockoff producers. I knew it would not be easy but I had no idea where this journey would take us.”

The decision was issued on June 28, 2020, by the Intellectual Property Division of the Suzhou Intermediate People’s Court (Case No. [2019] Suzhou 05 Intellectual Property First Instance No.580). The court found that the defendant’s products fall into the scope of protection of Oracle Lighting’s Chinese Design Patent Registration No. ZL201830136860.7, and thus infringes the patent.

The court’s decision includes an order for the defendant to immediately cease infringing upon Oracle Lighting’s patent. The court also ordered the defendant pay significant monetary damages to Oracle Lighting and ordered that the defendant pay certain court costs associated with the litigation. In doing so, the court also rejected the defendant’s arguments that they had come up with the design for this particular grill prior to Oracle Lighting filing its design patent application.

“In order for us to file litigation against the infringing company, the Chinese court explained that we had to first complete a ‘notarized purchase,’ which basically translates to us having to conduct our own sting operation,” Hartenstein continued. “Our attorney assisted us in hiring private investigators overseas who, after months of investigation, used a cover story to gain access to the factory and, with hidden cameras, obtained evidence of the counterfeit parts. The entire operation had to be covert because these factories producing knockoff goods are often designed to be packed up and moved overnight, making them hard to pin down. Once our legal team in China presented this evidence to the judge, the court issued a demand to the factory to shut down production and the nearly two-year-long litigation process began. This was a massive undertaking for our company but I pursued this in the hope that it provides insight for other small businesses trying to protect their intellectual property rights overseas. It was not easy but these results demonstrate that even overseas counterfeiters can be held accountable. Oracle Lighting takes our intellectual property rights very seriously and we are willing to do whatever it takes to prevent the blatant theft of our patented designs.”

Designed for use on the Jeep Wrangler, Oracle Lighting’s Vector Grill has earned the company awards from SEMA, including a 2018 Global Media Award and a runner-up award for the SEMA Best New Exterior Accessory Product of 2019. The Court’s decision is still subject to an appeal to the Jiangsu Higher Court.

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