Warren Oil is suing Smittys Supply Inc. for trade dress and trademark infringement on its automatic transmission fluid sold in Bolivia, alleging that the latter has poached millions of dollars of Warrens potential sales by intentionally creating confusion in the retail marketplace.
Warren Oil, of Dunn, N.C., filed civil action in the U.S. Eastern District of North Carolina last month. According to court documents, the automotive and industrial lubricants manufacturer alleges that for several years, Roseland, La.-based Smittys Supply has been intentionally selling automatic transmission fluid in Bolivia with bottles, labels and trademarks identical to those of the ATF that Warren Oil sells in Bolivia.
Smittys – represented by attorney A. Bradley Berner of Greensboro, N.C. – denied that the company is involved in any way, in a Dec. 31 letter to Warrens counsel. Although the products are labeled with Smittys name and address, Berner told Lube Report that Smittys does not have any sales in Bolivia, that the allegations in the lawsuit are blatantly false, and that Smittys will take legal action against whoever put the product on the market.
The lawsuit pertains to Warrens Quality Supreme brand – a line of transmission fluid that Warren says had averaged sales of around 30,237 gallons, or $163,000 per month in the South American country from January to October 2013. Warren claims that in November and December of 2013, however, its Quality Supreme sales in Bolivia had dropped to zero, spurring Warren to investigate.
Warren discovered an ATF named Quality Supers that was being sold in the same retail outlets as Quality Supreme. Warren claims that the bottles look identical in every way, including fonts, stripes, colors, and other details, including a Type A designation. Warren provided the court with photos of both its product and the fradulent product.
Warren noted that Supers is a registered trademark of Smittys in the U.S., but that Quality Supers has not been registered. However, the Quality Supers bottles include Smittys Supply Inc.s name and address, and Warren also claims it found evidence that the bottles had been packaged and shipped from Smittys Roseland, La., headquarters.
Warren requests that if found guilty, Smittys remove all products from the market and pay the full amount of profits made from the counterfeit product, along with actual and statutory damages.
Warren Oil’s Quality Supreme ATF Counterfeit Product Alleged to be Smitty’s
(photos obtained from http://pacer.gov)