Secalt S.A. v. Wuxi Shenxi Construction Machinery Co.

Summarized by:

  • Court: 9th Circuit Court of Appeals Archives
  • Area(s) of Law: Patents
  • Date Filed: 02-07-2012
  • Case #: No. 10-17007
  • Judge(s)/Court Below: Circuit Judge McKeown for the Court; Circuit Judges Hawkins and Smith.
  • Full Text Opinion

A companies external design elements are not entitled to trade dress protection unless they can prove that the design does not serve any functional purpose and used only to set their design apart.

Tractel manufactures and sells traction hoists used for commercial building projects and maintenance. Jiangsu, a Chinese competitor, exhibited a similar looking hoist at a trade show. Tractel brought suit claiming that Jiangsu’s hoist infringed the trade dress of their hoist in violation of the Lanham Act and other state laws. The district court granted Jiangsu’ motion for summary judgment and Tractel appealed. In support of their claim, Tractel argued that the exterior appearance of its hoist is nonfunctional and designed solely to set it apart from other competitor hoists. However, the Ninth Circuit found that the exterior design served other functional purposes resulting in superior performance and easy maintenance and was not entitled to trade dress protections, despite Tractel's design patent. Further, the Court affirmed the district courts finding that Tractel’s continued pursuance of their claims, despite being put on notice of lack of proof, was unreasonable and entitled Jiangsu’s to attorney’s fees under the Lanham Act’s AFFIRMED in part; REVERSED in part; and REMANDED

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