Filed Oct. 14 in the Federal District Court for the Southern District of Indiana, the lawsuit names Tailor Made Oil Co. LLC, TM Oil LLC, Circle Town Oil – three related companies in Indiana – and New York-based distributor Jafarikal Corp. as company co-defendants. Individuals associated with the Indiana businesses and named as co-defendants include William R. Selkirk, Rebecca Selkirk and Lincoln R. Schneider.
The lawsuit alleges the defendants have, individually and collectively copied APIs federally registered certification marks. The use of the API Certification Marks on engine oil bottles containing engine oils that fail to meet APIs performance and quality requirements will mislead end users as to the quality and performance of the engine oil, the lawsuit asserts. The use of such uncertified oil by unsuspecting end users could result in expensive engine damage or failure, denial of warranty claims by auto manufacturers and loss of property.
API seeks preliminary and permanent injunctions and monetary relief, including damages sustained by API in amount not yet determined but believed to be well in excess of $75,000. It also seeks statutory damages of $1 million per counterfeit mark per type of goods sold. Among other things, it also asks for seizure of the alleged counterfeit goods and packaging, as well as the means of making counterfeit goods and marks.
I havent seen the lawsuit, but we have never, ever stepped out of rules about how to use API service levels, Tailor Made co-owner William Selkirk told Lube Report yesterday. Selkirk described the company asa bulk blender, and said it briefly tried shipping packaged products last year, which he claimed were the only loads where the company would make reference to API.
On three occasions we shipped out to small packagers to have quarts packaged for us, Selkirk claimed. That was a year ago, in June 2010. Two shipments were overseas, and one went to New York. Thats the only time weve ever referenced API. We didnt use the donut or anything like that. Thats the facts as I know them so far.
He claimed the companies really have not done anything that warrants an API attack. We just havent. Instead, he believes another company may be using Tailor Mades label design without permission, which he said is a problem the company has dealt with twice in the past, including once by a former employee.
API said that in March 2010, the defendants submitted an application for certification of six engine oils offered under the brand name Tailor Made Oil in viscosities of SAE 5W-20, 5W-30, 10W-30, 10W-40, 15W-40 and 20W-50. All claimed to meet API service category SM, and at least one also claimed API service category CI-4. API said that as part of the application process, the defendants represented and warranted that the oil met the product qualifications and provided apparently appropriate testing documentation to substantiate the representations. Based on the materials, API granted the defendants a license to use the API Certification Marks on the products included in the application for one year.
In March 2011, the defendants were required to report the volume of licensed engine oil sold and pay a license renewal fee. According to the lawsuit, they failed to comply and forfeited the right to use the API certification marks and/or the SM designation in any manner on or about March 20, 2011. The lawsuit alleges the defendant companies continue to manufacture, bottle and distribute engine oils that bear counterfeit imitations of API Certification Marks and falsely represent their engine oils as qualified for APIs SG, SL and SM designations.
Recent investigations by API indicate that this original (now expired) license was procured by the [defendants] using fraudulent testing documentation and that no engine oil manufactured, sold or distributed by the defendants under the Tailor Made brand ever qualified for APIs certification program, the lawsuit noted.
API declined to discuss ongoing litigation.