The latest development in the ELFBAR trademark lawsuit is that the brand name will be abandoned and a new name, EB design, will be launched in March.
On February 23rd, the Federal Court for the Southern District of Florida in the United States issued a ruling approving a preliminary injunction motion filed by VPR Brands LP [ECF No. 5] and denying a motion for reconsideration filed by the defendant, Shenzhen Wei Bo Li Technology Co., Ltd. [ECF No. 76].
A judge has ordered Shenzhen Weipolo Technology Co., Ltd. to cease all marketing activities of its "ELFBAR" brand e-cigarette in the United States, following a lawsuit by VPR Brands LP claiming that "ELFBAR" infringes on its trademark for the "ELF" e-cigarette that it produces and sells.
The logo of the defendant brand "ELFBAR" as sourced from ELFBAR.
The logo of the plaintiff brand "ELF" originates from vprbrands.com.
According to legal news outlet Law360, in November of 2022, VPR had requested an injunction to prevent Shenzhen Weipu Li from continuing to use the ELFBAR trademark. VPR claimed that Weipu Li's alleged infringement had a negative impact on their future sales, resulting in a loss of approximately $100 million. Weipu Li argued that VPR's trademark was unenforceable under the "doctrine of unlawful use" since VPR's ELF e-cigarette had not received PMTA approval from the FDA. The case was heard by the Eleventh Circuit Court, which viewed the "doctrine of unlawful use" as an administrative tool for trademark disputes. The previous case ended with VPR losing the lawsuit.
VPR subsequently stated that their CEO saw an advertisement for the ELFBAR product in a trade magazine. The product's shape and size were almost identical to their own ELF product, only it was made of plastic, disposable, not rechargeable, and pre-filled with nicotine-laced e-liquid.
The lawsuit alleges that Shenzhen Weiboli not only infringed on VPR's ELF trademark but also violated its electronic cigarette device patent.
VPR alleges unfair competition and demands compensation for sales and profit losses, triple damages, and legal fees.
During the trial on the 23rd, the judge stated that the trademark registration for VPR (submitted in November 2017, approved in May 2018) gave it priority, and furthermore, the company had demonstrated the possibility of confusion because "ELF" is not particularly related to electronic cigarette products, and the suffix "bar" is commonly used for bar-shaped e-cigarettes - so consumers familiar with electronic cigarettes would assume that ELFBAR comes from the ELF brand.
Although Shenzhen Weipoli Company argued that the ELF trademark was not well-known because the sales of ELFBAR were much stronger, the judge wrote that the "insignificant" sales of ELF could not explain the issue.
The judge wrote, "The defendant had no right to infringe upon a validly registered trademark and then attempt to avoid the consequences of infringement by surpassing the trademark owner in sales.
In fact, there is a difference between ELFBAR and ELF products. The former is a pre-filled disposable e-cigarette while the latter is a refillable pod vape. However, the judge ruled that this difference is not significant enough to undermine the conclusion that "consumers could be confused." The judge also wrote in the ruling that these products are sold and promoted in the same circles, primarily through distributors and trade magazines, which further strengthens the court's conclusion that ELFBAR products could potentially confuse buyers.
Although there is no clear evidence that ELFBAR intended to adopt the ELF trademark, the judge still stated that Wipro has a good understanding of the ELFBAR trademark. This is because the US Patent and Trademark Office specifically refused to register the ELFBAR trademark in July 2021 for these reasons.
Although the judge believed there wasn't sufficient evidence to prove actual confusion – the only evidence being a text message from a distributor to VPR CEO Kevin Frija asking whether VPR was the manufacturer of ELFBAR – the judge wrote that "other factors weigh heavily in favor of granting the injunction, such as the public interest in avoiding market confusion.
The judge wrote that executives from VPR testified that their sales declined when ELFBAR entered the market, and if Shenzhen Weipuli is allowed to continue selling its products in the United States, VPR will not be able to control its trademark.
Finally, the judge refused the request from Shenzhen V-Power to hold a new evidentiary hearing on the injunction, citing that the court had already held two hearings that lasted over 9 hours and had received ample evidence.
VPR stated, "We are pleased with the outcome of this ruling. The injunction will allow VPR to effectively combat copyright infringers and counterfeiters in the market.
A lawyer from Shenzhen Wei Poli said that the company intends to appeal the verdict.
On February 25th, 2FIRSTS randomly contacted two electronic cigarette stores and suppliers located in Florida. Neither of them had received any notification regarding the need to remove or withdraw their products. 2FIRSTS expects that the normal sales of ELFBAR will not be affected until Weeporly appeals.
At the TPE trade show in Las Vegas, 2FIRSTS staff from the Washington News Center interviewed representatives from the ELFTHC booth, located at booth 3252. The company stated that they are a newly established brand under the ELF name. ELF expressed their joy over winning a legal case. Meanwhile, the North American public relations manager for ELFBAR revealed to 2FIRSTS that they will be using a new brand name, "EB Design.
Stay tuned for continued coverage from 2FIRSTS.
Sources from 2FIRSTS Washington News Center have reported that the staff members of the ELFTHC booth and ELFBAR were interviewed.
Reference:
The makers of the 'Elf' brand of vapes have obtained an order preventing counterfeiters from producing and distributing imitation products.
Judgment (in English)
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