Bourdeau Bros v. ITC and Deere & Co. (Fed. Cir. 2006, 04–1588).
John Deere sells its 5000 and 6000 series harvesters in both the US and Europe. The 5000 series is manufactured in the US and shipped abroad while the 6000 series is manufactured in the US for the US market but manufactured in Germany for the European market.
Based on Deere’s US Trademarks, the International Trade Commission (ITC) granted a general exclusion stopping third party importation of the harvesters originally sold in the European market.
Reimportation: On appeal, the three judge panel agreed that “importation and sale of a trademarked good of domestic manufacture, produced solely for sale abroad and not authorized by the owner of the trademark for sale in the United States, may violate section 1337 if the imported good is materially different from . . . those goods bearing the same trademark that are authorized for sale in the United States.”
Thus reimportation of “grey market” goods can be stopped when they are materially different from “substantially all” of the authorized US versions. Here, the CAFC found that Deere established material difference, but failed to meet its burden of proving that its US sales did not include any of the European versions.
To win on remand, Deere must:
establish [with a preponderance of the evidence] that the number of sales of European forage harvesters was so small that substantially all of Deere's sales in the United States were of North American forage harvesters, such that substantially all of the authorized sales were of goods bearing the asserted material differences.
The CAFC also found that the “ITC erred in granting a general exclusion order that did not contain an exception for goods bearing a permanent nonremovable label indicating their origin.”
Vacated and Remanded.
Our 1969 John Deere 4020 is pictured above along with three cows from our herd.