13 October 2016Trademarks

Fujifilm takes aim at importers in grey goods action

Digital camera manufacturer Fujifilm has targeted more than 50 defendants in an action for unfair competition.

Filed at the US District Court for the Eastern District of New York on Tuesday, October 11, Fujifilm’s suit alleged that the defendants, which include retailers, wilfully imported and sold grey market cameras.

According to Fujifilm, the cameras physically and materially differ from products authorised for import to and sale in the US.

“Defendants’ importation … and/or sale within the US of grey market cameras intended for markets outside of the US is likely to result in consumer confusion and stymie FNAC’s [Fujifilm North America Corporation’s] quality control efforts, causing irreparable harm to FNAC that will continue unless such conduct is enjoined,” said the suit.

Fujifilm explained that in order to maintain quality control over genuine Fujifilm and Instax-branded products, it sells them only through a channel of “specifically authorised local dealers and distributors”.

Products bearing the Fujifilm marks intended for sale outside the US include Instax and Fujifilm X Series cameras and accessories.

The camera manufacturer alleged that the products are different in terms of the geographical warranties, the packaging and product labelling, serial numbers and tracking codes, and accessories.

Some of the grey market products frequently have no warranty coverage at all, alleged Fujifilm.

Fujifilm added that it has suspected the importation and sale of grey market products into the US, and has been generally aware that such infringement was probably occurring, at least as early as June 2016.

It alleged that the defendants’ sale of the products was done “with actual knowledge of the reputation and goodwill in the Fujifilm marks” and/or “with the intent of passing off such products as genuine products”.

According to Fujifilm, the sale of the goods “substantially harms” consumers, restricts Fujifilm’s “ability to police the quality of its products” and deprives it “of the opportunity to earn profits”. The conduct also results in “consumer confusion” and “substantial reputational harm” to Fujifilm.

Fujifilm is seeking permanent injunctive relief and the recovery of actual damages, statutory damages, triple damages, profits, costs, attorneys’ fees, punitive damages and other relief.

A spokesperson for Fujifilm said: “As the leader in the photographic market, Fujifilm has built its brand and reputation on delivering the highest quality products to our customers and to their consumers.

“To ensure this quality standard is maintained, and fulfil our consumer product warranties, the products sold in this market need to remain in our supply chain system from manufacturing through to delivery to our valued retail customers.”

It added that any break in this chain can "potentially lead to damage of our brand” and result in financial harm "if these stringent quality standards are not maintained”.

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