Examples from practice
TRADEMARK AND PRODUCT PIRACY HARMS MANUFACTURERS, DEALERS AND CUSTOMERS, BRASH PLAGIARISM AND POOR QUALITY FORGERIES ARE NOT JUST DANGEROUS BUT ALSO A GIGANTIC COST FACTOR: THEY EAT UP CAPITAL AND JOBS. NO MANUFACTURER OF POPULAR BRAND PRODUCTS IS SAFE FROM FORGERIES—INCLUDING MAHLE. BUT THE COMPANY HAS ITS WAYS AND MEANS OF PROTECTING ITS OWN TRADEMARKS AND THE BRANDS IT SERVES.
A bonanza for counterfeit products. More and more dubious companies copy high-quality products of renowned brands down to the packaging – in the hope, to make easy money by illegally using good names and bad materials. As top-brands, MAHLE Filter and Knecht are not immune to counterfeiting.
Counterfeiting of automotive components is not a harmless crime but a real danger: the examples shown here are not only damaging to the reputation of the copied brands but also to the engine – and therefore to everyone in the supply chain who sells or is fitting such components. However, the counterfeits are not easily recognised – from the outside, the illegal copy is often inconspicuous. This is why our experts have looked inside of two rather impudent counterfeits.
The oil filter: The counterfeit is not operational
Tested and not passed
The filter, allegedly an OC 257, which a retailer sent to MAHLE Aftermarket for investigation, did initially not look conspicuous. After a simple scratch test at the printed label matters became more doubtful: the paint could easily be removed with the fingernail.
At the left, the original with abrasion-resistant printing. At the right, the counterfeit, where the printing could be removed with the fingernail.
Missing corrugation: cause for leakage
After opening the filter, a look at the end plate: in the counterfeit the second corrugation is missing. In the original, it serves to reinforce the cover plate to prevent distortion under load which causes the sealing ring to loose its sealing ability.
The end plate from the outside: undistinguishable.
But internally the counterfeit lacks the reinforcement corrugation.
Filter element: short and bad
Now the actual filter element: this is 10 mm shorter than in the original. This results in about 9 % less filter surface – and therefore less filter performance and reduced dirt pick-up. Furthermore, the element has only 60 pleats instead of 80! The lower number of pleats alone leads to a reduction in filter surface by 25 %. This means that together with the 9 %, the dirt pick-up is reduced by 34 % and the service life is reduced by 34 %.
Also the irregular pleat geometry is noticeable: sections of the filter paper are folded very tightly – just short of block forming. However, in other areas the distances are much too wide. Furthermore, the adhesive bond is missing at some areas between pleat star and metal plate, with the disastrous result that oil is here flowing directly from the dirty side to the clean side!
At the left, the original, right the counterfeit: a shorter filter element and irregular pleating.
In detail: the pleating is inadequate – and partly not glued on properly.
Anti-drain valve: not so clever
A particularly critical part is the seal between the dirty and clean side in the area of the anti-drain valve. In filters of the brands MAHLE and Knecht, the filter element is distinguished by a clean radius that, in connection with a precision moulded rubber part, serves as a perfect anti-drain valve. However, in the counterfeit filter, a sharp metal edge can be seen and the oil is flowing directly pass its sharp, cracked edge – without filtration – from the dirty side to the clean side.
The original: a precision seal.
The counterfeit with sharp, leaky metal edge through which the unfiltered oil can flow.
In the original, the anti drain valve is made with a precision moulded rubber part. At the right, however, the counterfeit with a simple, punched out rubber disk that does not fit tightly to the sealing surface.
The result: depending on the fitting orientation (filter fitted horizontally or on its head), the filter can drain entirely after the engine is stopped – and it has to be filled again completely at the next start of the engine. Until this happens, the engine is not supplied with the necessary oil (pressure). In the long run, this will lead to increased wear at the different lubrication points in the engine such as crankshaft bearing, camshafts or cylinders.
Breakdown at the bypass
The bypass valve of the counterfeit oil filter concludes its disqualification. This important part has the task to ensure the oil supply of the engine under all conditions – for instance, also when an element is completely blocked or at extremely low temperatures (resulting in highly viscous oil). In the counterfeit, this valve is completely non-operative: the spring tension is so low that it stays open even under normal operation … and the oil flows permanently to the engine without filtering. This means that the copied oil filter cannot do its job – with the result that the engine will be damaged in a relatively short period of time.
The MAHLE bypass valve
And the non-operative counterpart in the counterfeit filter
Plastic instead of aluminium
The counterfeit KL 72 arrived at MAHLE Aftermarket in a rather impudent form: in old Knecht packaging that was obviously a fake. When opened, it became quickly clear that it had to be a counterfeit: while the fuel filter is normally made from aluminium, the cheap imitation was made from plastic. Furthermore, it had the wrong designation: instead of the German word “Kraftstofffilter” it read “Krarislofffilter”.
We make the KL 72 from aluminium. The counterfeiters are content with plastic – and spelling mistakes on the housing.
Not tight at all
The filter element was inconspicuous at first sight but showed a significant flaw: the sharp edge is completely unsuitable for sealing the dirty side from the clean side – a radius is required here.
Also the difference in size between the hole in the filter element and its counterpart is so large that no seal can be expected: the fuel flows unfiltered from the dirty side to the clean side.
The required radius has been replaced with a sharp edge. The result: leakage.
Deliberate deceit of consumers by imitating Knecht and MAHLE Original filters: the firm of “Bavaria Filter Werke” doesn‘t exist … and both manufacturers are certainly not“OEM”.
Spare parts are important for the function, roadworthiness and value of vehicles. If a part is of a poor material quality and workmanship there is a risk to road safety. This is easy to understand in the case of spare parts that are relevant for safety such as brake linings. But other components also hold safety risks: broken engine valves can lead to an abrupt engine stop. Poorly made fuel filters that leak constitute an explosion risk. Engine oil filters with an inadequate filter performance are an incipient risk: they do not keep dirt particles out of the engine oil, thus increasing wear and the risk of serious consequential damage.
TRADEMARK PIRACY: AN OPTICAL ILLUSION
The automotive parts market, like almost every other market, is riddled with products whose name or packaging design copies that of famous brands to suggest a product quality to customers that is very often not given. In such cases experts talk of trademark piracy. This sound harmless, almost like a trivial offence. But the consequences and dangers are far-reaching—and the damage produced by counterfeit products is huge. This is why legislation offers manufacturers of the original products ways to combat trademark piracy and forbid the illegal use of their trademarks or imitation of their packaging.
PATENTS—PROTECTING IDEAS AND INVESTMENTS
The development of new automotive parts entails big investments that have to be recuperated through the price of the product to allow future research and development work. MAHLE thus protects its new developments against illegal copies through patents: other manufacturers may only copy these products after 20 years—or they have to acquire a licence. The investment costs can thus be recuperated over a longer period of time and do not have to be earned over a shorter period through the product price.
TRADEMARK OR PATENT INFRINGEMENT?
If MAHLE becomes aware of a competitive or pirated product, for example through tip-offs from dealers, representatives or findings on the Internet, we initially obtain a sample—the evidence. This is sent to the MAHLE patents department which checks whether it is a case of trademark infringement. This is the case if “the outer appearance is such that it gives the impression“, that it is a MAHLE product. A patent infringement is much more difficult to check. The OX 171 oil filters produced by MAHLE, for example, are protected by at least four patents. A patents expert now checks step-by-step whether the product in question matches the wording of the patent specification.
THE CONSEQUENCES FOR PIRATES: CHANGE, BUY—OR PAY THE PENALTY
If MAHLE discovers a trademark or patent infringement it initially tries to reach an amicable agreement with the perpetrator. The product is then either changed so that it no longer infringes a patent or it is purchased directly from MAHLE in future. If an agreement cannot be reached the defendant has to reckon with the consequences: compensation for damages, reimbursement of costs and a cease and desist notice. If the defendant did not manufacture the counterfeit product himself but purchased it elsewhere he must fulfil his duty to provide information and tell us who the supplier is. Of course, there are also cases where the defending dealer himself is the victim of deceit. In this case the dealer can claim compensation for damages from his supplier—which is easier to enforce with the aid of the cease and desist notice against the supplier secured by MAHLE.
FIGHTING CRIME AT ITS ROOT
Determining the source of counterfeit products is one of the most important instruments in the battle against trademark and product piracy. Knowing which wholesalers or manufacturers bring or want to bring patent or trademark-infringing products onto the market helps put a stop to the actual perpetrators of product counterfeiting and therefore protects the market—as well as dealers, workshops and drivers—against trademark and product piracy. In order to keep counterfeit products off the markets MAHLE can also enlist the help of the customs authorities and have suspect products confiscated at the borders—by means of the so-called seizure of goods at borders proceedings. Counterfeit products from overseas especially can hence be confiscated and destroyed.
A copy of the OX 171 with “Pin”—and two infringements of MAHLE patents: the small sealing ring is not fitted (it is enclosed loosely with no instructions as to how and where it should be fitted) and the seal is adapted to the end plate.