BIC Secures Rare ITC General Exclusion Order Blocking Import of Imitation Lighters in Major Trade Dress Infringement Case

July.15.2020

Siding with an Orrick IP litigation team, the United States International Trade Commission issued a rare General Exclusion Order for BIC preventing the importation into the U.S. of all pocket lighters that imitate the BIC’s iconic trade dress. The order, which determined knock-off lighters infringe BIC’s registered trade dress regardless of who is importing the product, will be enforced by U.S. Customs and Border Protection.

The June 22 ruling, one of only a handful of exclusion orders issued each year by the ITC, concludes an investigation initiated by BIC to halt the unauthorized importation into the U.S. of low-quality, knock-off pocket lighters that imitate the design of BIC lighters without meeting the company’s stringent safety and quality standards.

An Orrick team led by partners Peter Vogl and Jordan Coyle pursued the general exclusion order to overcome the unrelenting importation of infringing lighters, which because of their low quality pose particular safety dangers to consumers. As part of the litigation, BIC also settled with two respondents, forcing them to redesign their lighters worldwide and pay a significant settlement.

“This is the best outcome we could hope for: the registered trade dress and iconic design of BIC lighters will be protected by the U.S. government,” said Steve Burkhart, BIC’s Vice President and General Counsel. “Halting the importation of non-compliant, knock-off lighters into the U.S. market is not only a victory for BIC but for all of our consumers and customers who trust BIC lighters for our uncompromising commitment to safety, quality and reliability.”

In addition to Peter and Jordan, the Orrick team on the ITC case included associates Briggs Wright, Olamide Olusessi, Chris Cariello, Diana Szego Fassbender, and Alyssa Barnard-Yanni.