After fighting for more than a year to halt the flow of Chinese counterfeit pocket lighters into the U.S., BIC Corp. has scored a legal victory by way of a general exclusion order from the U.S. International Trade Commission. 

"This is a big deal," BIC general counsel and vice president Steve Burkhart said in an interview Wednesday. 

"The remedy that we achieved pertains to every person and company. It's huge. And it's just not that familiar to people, even some legal practitioners didn't realize how this worked," Burkhart added. 

The case began in December 2018, when BIC filed a pair of trademark infringement complaints against the alleged counterfeiters and their stateside distributors before the commission in Washington, D.C., and the U.S. District Court for the Eastern District of New York in Brooklyn. 

BIC is a French company with a North American headquarters in Shelton, Connecticut, where it has a factory that produces about 1 million lighters daily. The company pursued the complaints not only as part of an effort to keep the lighters in question out of the country but also to draw attention to the issue of intellectual property theft. The counterfeit lighters also can be dangerous and risked damaging BIC's reputation, according to Burkhart. 

Based on BIC's complaint, the commission in February 2019 launched an investigation into BIC's allegations that several Chinese companies had committed trademark violations. 

The probe resulted in a June 22 exclusion order that prevents imitation BIC pocket lighters from being imported into the U.S. The order names two Chinese manufacturing firms and an import company in San Diego. But the order can also apply to any company in the world that attempts to sell or import knockoff lighters in the U.S. The U.S. Customs and Border Protection will enforce the order.

"We've already been on the phone with them. There's a number of people we've talked to about the resources and programs they have to enforce," Burkhart said. "We've been very impressed with the attention they've paid to us on this case." 

But he acknowledged that customs and border agents have "enormous responsibilities to the American people way beyond ITC orders." So BIC plans to help the Customs and Border Protection enforce the order. The company has developed a surveillance program that monitors more than 40 e-commerce platforms and will alert Customs and Border Protection when the company finds potential violations, according to Burkhart. 

"We look for violations of everything from our intellectual property to pricing that's clearly irregular, which suggests illegal activity, to illegal shipments, because these are hazardous materials," Burkhart said. 

"We've found approaching 20,000 illegal sellers on the various platforms trying to penetrate the U.S. market through nontraditional means: airports, different ports of entry that aren't New York or Long Beach. We give that information to customs," he added.  

Earlier this year, BIC entered into a settlement agreement with one of the defendant companies, Arrow Lighter Inc., which does business as MK Lighter Inc. and MK Lighter Co. of City of Industry, California. As part of the agreement, which included a confidential monetary settlement, Arrow agreed to alter the design of its lighters, according to Burkhart.   

Attorney Charles Wu of Irvine, California, represented Arrow and another respondent, Excel Wholesale Distributors Inc. He wrote in an email that his clients "settled with the petitioner BIC more for the business reason of wanting to save legal fees. As to the merit of petitioner BIC's case, we do not believe BIC has an invincible case."   

The other respondent companies did not have attorneys and defaulted, "which is part of the playbook, particularly with Chinese defendants," Burkhart said. 

"If you can get them served, which is in and of itself an achievement, they often just say, 'I'm not participating because you can't touch me. I've got no insurance. No assets. I'll just go out of business,'" he added. 

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