Albany, NY — In a decision of significant import to U.S. Trademark law and U.S. trade policy, the United States International Trade Commission (ITC) reversed a prior ruling and rejected Deere & Company’s claims against American farmers involved in the importation and sale of Deere self propelled forage harvesters from Europe. In this election year, when the economy, job outsourcing, and reliance on foreign imports is at the forefront, the ITC held that Deere could not prevent the importation and sale of its European forage harvesters in the United States. The decision, made public today by the ITC, finds that Deere failed to prove its claim that the importation and sale by Respondents of Deere forage harvesters from Europe constituted trademark infringement.

David P. Miranda, Nicholas Mesiti, and Brett M. Hutton, of Heslin Rothenberg Farley & Mesiti P.C., an intellectual property law firm based in Albany, New York, represented the lead group of Respondents, including Bourdeau Brothers of New York, and OK Enterprises of Minnesota. David P. Miranda, lead trial counsel for the Respondents stated “the Commission’s decision is a great victory for the American farmer and for free trade. The American farmer will not be prohibited from importing, purchasing and selling Deere

European forage harvesters in the United States. Deere’s 5 year effort to prevent the American farmer from purchasing European forage harvesters at competitive prices, has failed.”

Since the 1990’s Deere manufactured and assembled its “U.S.” and “European” version forage harvesters at the same manufacturing plant in Germany, on the same assembly line, using the same German workers, and the same basic parts. Deere outsourced production of its forage harvesters to Germany, sending many U.S. manufacturing jobs overseas.

The ITC proceeding was commenced by Deere in 2003, claiming the importation and sale of Deere’s “European” harvesters in the United States in competition with similar “U.S. version” harvesters constituted trademark infringement. The Respondents in this case include farmers who bought and sold used “European” Deere harvesters because they were similar to, but less expensive than, “U.S. version” machines. Respondents contended that Deere’s own official dealers were buying and selling the same European harvesters in the United States, and thus the sale of such harvesters could not be considered trademark infringement. At trial, Respondents’ counsel David P. Miranda and Brett Hutton argued that because official Deere dealers were selling the exact same harvesters in the United States, the importation and sale of these harvesters by others should not be prohibited.

Because the initial decision of the ITC entered in May of 2004, impacted domestic and foreign policy, President Bush had an opportunity to overturn the decision. After a sixty day review period, President Bush failed to take any action and Respondents appealed to the Court of Appeals for the Federal Circuit. On March 30, 2006 the Court of Appeals for the Federal Circuit vacated and remanded the decision of the ITC based upon the ITC’s failure to address the issue of the sale of European harvesters in the United States by authorized Deere dealers. Bourdeau v. ITC, 444 F.3d 1317 (Fed. Cir. 2006).

Following review on Remand, the ITC reversed the prior decision and found the following: “In our view, the Respondents were reasonable in their belief, based on the behavior of Deere officials, that the company did not object to their sales of EVSPFHs in the United States. We also deem credible the uncontroverted testimonial evidence from the Respondents as to the quantity of the EVSPFHs that they purchased from official John Deere dealers. Finally, we find that Deere’s conduct, which included inter alia the sale by EVSPFHs in the United States by official John Deere dealers, the financing of certain EVSPFH sales in the United States by Deere, the provision by Deere of warranty services to EVSPFHs present in the United States through much of the period, the lack of a manifestation visible to third parties of a stated Deere company policy discouraging or forbidding the practice of gray market importations by its official dealers until the very end of the period, and the failure of John Deere executives with knowledge of the gray market imports to discourage independent or official John Deere dealers from such imports, would lead a reasonable third party purchaser of EVSPFHs to conclude that John Deere had authorized the sale of EVSPFHs in the United States.” In the Matter of Certain Agricultural Vehicles and Components Thereof, Inv. No. 337-TA-487, at pg. 42 (USITC September 17, 2008). In light of the Federal Circuit’s prior rulings on this issue, no appeal is expected.

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