RBC Bearings Inc. (USA; NASDAQ: ROLL) and Peer Bearing (a division of SKF AB, Sweden) have agreed to settle and dismiss claims against each other in the long-running U.S. District Court battle over the use of RBC NICE 1600 Series, 7500 Series, and 7600 Series bearing identification, nomenclature and cataloging.

RBC's complaint against Peer dates back to 2006, after Schaeffler, Timken, Kaydon and General Bearing reached settlements and dropped out.

RBC acquired NICE Ball Bearing Company from SKF in 1987 (5251R9N7).

In 2006, RBC filed suit against Peer, in the U.S. District Court, District of Connecticut, asserting trademark infringement, unfair competition, advertising injury, and palming off/passing off claims, in violation of the Lanham Act, a copyright infringement claim in violation of the Copyright Act, and Connecticut state law claims for unjust enrichment, unfair competition, and violation of the Connecticut Unfair Trade Practices Act and the Connecticut Unfair Sales Practices Act.

Peer asked the court to dismiss the suit on various grounds, and generally succeeded except for the possibility of state trademark claims involving the 7500 and 7600 series bearings.

Bearing identification / numbering systems as trademarks, and bearing catalog content copyrights are at the heart of the entire complaint.

NICE originated the 1600 series ball bearings in the 1940's. In the early 1960's, shortly after Peer was founded, the company introduced a line of 1600 series bearings, to compete against NICE and a number of other bearing manufacturers then using the 1600 series nomenclature. Peer and other bearing companies, including NICE, published 1600 series cataloging and specifications in various catalogs through the years.

RBC's primary claim was that Peer has no right to use the 1600 Series numbering system to identify bearings, because the 1600 series numbers are trademarks of NICE Bearing.

RBC also claims Peer's catalogs copied sections of NICE's catalogs for those series bearings, and that Peer copied a table of load ratings -- which NICE claims should be different for bearings from each manufacturer using different "life factors", lubricants, material differences, production tolerances, and so on. Peer countered that load ratings are fundamentally a math calculation based on a bearing's size and construction.

The Court dismissed the catalog copyright infringement claims, essentially because catalogs are generally considered complications of publicly available information, and the Court found nothing about Peer's use that violated any copyright. It also found that RBC could not legitimately copyright sections in certain of its catalogs.

In 1957, NICE introduced and cataloged 7500 and 7600 Series ball bearings. Peer began selling 7500 and 7600 series bearings around 2002, adding them to the catalog around 2005. RBC also objected to Peer's use of the 7500 and 7600 Series on the same grounds of trademark infringement as the 1600 series.

For the part numbers, the Court found that when SKF sold the NICE business to RBC, the sale did include all the assets, copyrights, and other owned property, but the sale made no mention of any bearing 1600 Series designations or nomenclature as being part of the trademarks. Also, by then, the statute of limitations had long ago made any such argument moot and that 1600 series numbers were long considered part and parcel of "industry standard" bearing designations and had been in use by many bearing manufacturers.

RBC had also once objected to Peer's use of 600 and 6900 series numbers to identify bearings, but those complaints were dropped in mid-2009.

As to why it waited so long to complain about Peer using the 1600 series numbers, RBC claimed it only became aware of Peer as a competitor around 2002, even though the company knew it lost 1600 series bearing sales to Ariens in 1997 and had later written a letter to Ariens about Peer.

The Court found that in 2004, at least 25 other companies were selling bearings in the 1600 series. In 2006, RBC attempted to trademark the 1600 series bearings (1621, 1630, 1635, 1641), but the U.S. Patent and Trademark Office rejected them as being numbers in standard usage by the bearing industry and in any event were "merely descriptive" and not trademarks.

In April 2009, Peer asked the court for summary judgment to dismiss RBC's complaint entirely. Peer argued that RBC's copyright claim is beyond the statute of limitations, and because RBC sought to copyright material that is not copyrightable; to drop the complaint because RBC knew about Peer but failed to do anything for years; and because Nice's various Series bearing trademarks are generic -- or, alternatively -- that the alleged trademarks are meaningful but that RBC can't show they have any secondary meaning or that Peer's use could cause confusion in the market; that RBC's state law claims are barred because they are preempted by the Copyright Act, and because there can be no trademark because the trademark filing came outside the statute of limitations.

The Court has now found in favor of Peer and dismissed all but one issue.

In Peer's request to dismiss RBC's complaint about potential 7500 and 7600 Series trademark infringement, the court found neither side had submitted enough compelling or substantive evidence for it to rule either way -- but an open issue remained -- the staute of limitations may not have run out on RBC's potential claim against Peer using the 7500 and 7600 Series designations. So, essentially, the court denied Peer's request for summary judgement because it simply could not find enough usable evidence provided by either RBC or Peer.

The court allowed the state court complaint to go forward, "only insofar as they rely upon violation of their alleged trademark rights in the 7500 and 7600 series designations."

In late 2009, both sides agreed to dismiss charges against each other, and the court accepted the arrangement. However, it did leave the door open for Peer to collect attorney fees.

(Peer's later application for recovery of attorney's fees was denied by the court in May 2010.)