Law360 | High Court’s Lanham Act Ruling Won’t Mess Up Delaware Trial

Alston & Bird secured a groundbreaking jury verdict for Rockwell Automation, achieving a significant milestone for trademark owners who have long struggled to enforce their intellectual property rights against unauthorized gray market importers.

Alston & Bird secured approximately $10 million in damages for Rockwell Automation in its suit against an Italian counterfeiter Parcop S.R.L. (doing business as WiAutomation) in the District of Delaware. The final judgment—including $3.2 million in treble damages and $3.8 million in disgorgement—more than doubled the jury’s August 2023 award of $4.3 million. In a trailblazing verdict, the jury found WiAutomation, an Italian industrial equipment reseller, liable on five counts—trademark Infringement, counterfeiting, false designation of origin, deceptive trade practices, and unfair competition—for selling counterfeit and gray market Rockwell-branded manufacturing products in the United States.

Paul Tanck, Neal McLaughlin, Chris McArdle, Matt Welch, Joshua Weeks, Andrew Ligotti, and Stacy Gunder are noted for representing Rockwell Automation in its win over WiAutomation.

Paul Tanck, Neal McLaughlin, Chris McArdle, Matt Welch, and Joshua Weeks are noted for representing Rockwell Automation in its win over WiAutomation.

Alston & Bird client Rockwell Automation Inc. has won a significant victory at the U.S. International Trade Commission (ITC), which unanimously upheld an Administrative Law Judge’s finding that gray market importers of Rockwell’s industrial automation products infringed several of Rockwell’s trademarks.