## Facts

- Lever Brothers Company (Lever U.S.) sold U.S.-market “Shield” deodorant soap and “Sunlight” dishwashing liquid under U.S.-registered trademarks.
- A British affiliate (Lever U.K.) sold goods under the same marks in the United Kingdom, but with different formulations and packaging tailored to local conditions.
- Third-party importers brought the U.K. versions into the United States, where consumers bought them believing they were the U.S. versions; Lever U.S. received complaints tied to product differences.
- Differences included, among others, variations in lather, scent, colorants (including FDA certification status), inclusion of a bacteriostat in U.S. Shield, differing sudsing and water-hardness formulations for Sunlight, and distinct logos, bottle/packaging shapes, and labeling.
- Lever U.S. challenged Customs’ allowance of entry under a regulation permitting importation when the U.S. and foreign trademark owners were under common ownership or control (the “affiliate exception”).
- The district court ruled the affiliate exception invalid as inconsistent with Lanham Act § 42 and entered a nationwide injunction barring enforcement of the regulation as to materially different foreign goods bearing valid U.S. trademarks.

## Issues

1. Whether Lanham Act § 42 (15 U.S.C. § 1124) forbids importation of physically and materially different gray-market goods bearing a trademark identical to a valid U.S. trademark, even when the U.S. and foreign trademark owners are affiliated.
2. Whether the district court erred by issuing a nationwide injunction rather than limiting relief to the parties and products before the court.

## Decision

- The court held that Lanham Act § 42 prohibits importation of physically and materially different goods bearing a trademark identical to a valid U.S. trademark, without regard to corporate affiliation between the foreign and domestic trademark owners.
- The court held Customs’ affiliate exception regulation invalid to the extent it permitted entry of such materially different goods.
- The court vacated the district court’s nationwide injunction as overbroad.
- The court remanded with instructions to enter a narrower injunction focused on the foreign-produced Lever products at issue (Shield and Sunlight), rather than a blanket prohibition covering all materially different foreign goods with U.S. trademarks.

## Legal Principles

- Under Lanham Act § 42, imported goods may “copy or simulate” a U.S. trademark when they bear an identical mark but are physically or materially different in ways likely to mislead consumers about the nature and qualities of the product.
- Corporate affiliation between the foreign and domestic trademark owners does not, by itself, eliminate the statutory concern with consumer confusion and deception at the border.
- An agency regulation cannot authorize importation that a statute forbids where the statutory text, applied to the relevant circumstances, leaves no room for an affiliation-based exemption.
- Injunctive relief should be no broader than necessary to resolve the dispute and protect the plaintiff’s interests; remedies generally should be limited to the parties and products before the court absent a stronger justification.

## Conclusion

The D.C. Circuit ruled that Lanham Act § 42 bars importation of materially different gray-market goods bearing identical U.S. trademarks even when made by an affiliated foreign company, but it required that injunctive relief be limited to the specific Lever products involved rather than imposed nationwide for all similar goods.


Lever Bros. Co. v. United States, 981 F.2d 1330 (D.C. Cir. 1993)