Potential Settlement in Elfbar Trademark Dispute

According to a report by LAW360, a mediator has informed a federal judge in Florida that the litigation between American VPR and Chinese e-cigarette brand ELFBAR over the "Elf" trademark may be resolved through a settlement, as a favorable ruling on two crucial issues for one party could potentially "compel" the other party to "revise their settlement demands.

According to the report submitted by the designated mediator in this case, VPR Brands LP and the manufacturer of ELFBAR may reach an agreement to settle the trademark dispute, despite the involvement of federal courts in Georgia. However, the ultimate advantage seems to largely depend on the ruling of US District Judge Aileen M. Cannon on two documents.

Attorney David K. Friedland, who is responsible for mediating, stated, "Both parties believe that the court's consideration and determination of the issues presented in the 'two motions' will compel one or both sides to modify their settlement demands and could potentially lead to a resolution through negotiation.

These proposals aiming to facilitate a resolution involve lifting the temporary ban on Chinese companies selling ELFBAR products and prohibiting American companies from selling alleged counterfeit ELFBAR products referred to as "VPR".

Below is a case summary:

The core of the dispute between American and Chinese companies lies in the usage rights of the term "Elf" on e-cigarette products. VPR filed a lawsuit against the distributor Shenzhen Wei Boli Technology Co., Ltd. and manufacturer iMiracle (HK) Limited in October 2022, alleging that they infringed VPR's trademark rights by selling Elfbar, which is the most popular disposable e-cigarette brand among young users.

In the month of February, Judge Cannon issued a temporary injunction against Chinese companies, prohibiting them from selling any e-cigarette products bearing the name ELFBAR. Judge Cannon stated that there is currently "no dispute" that these companies intentionally infringed VPR's trademark rights.

Shenzhen VPR and iMiracle, in their first submission, claim that they can prove VPR is not the original user of the ELF trademark. The documents submitted by these two companies on April 24 state that they have discovered the actual owner of the ELF trademark, a Chinese company called GD Sigelei Electronic Tech Limited. This company first used the "ELF" mark to sell e-cigarette products in April 2016, which is almost a year and a half earlier than when VPR's initial ELF products hit the market.

In March this year, two Chinese companies signed a trademark transfer agreement, claiming to have transferred the rights to the Elf trademark to iMiracle. As a result, they have requested Judge Cannon to revoke the temporary injunction.

Another crucial document claims that VPR, in violation of a court order barring them from producing ELFBAR, sought to gain market share. According to the document from May, VPR launched a "blatant replica" of the iMiracle-produced ELFBAR disposable e-cigarette. Both Chinese companies allege that these inferior counterfeit products will confuse consumers, ultimately resulting in ELFBAR losing market share and reputation.

Although both sides have told mediators that Judge Cannon's decision on these two motions will "inform their position for settlement," the case remains at a standstill.

Judge Cannon has suspended the litigation, awaiting an appeal filed by the Chinese companies to the federal circuit court in an attempt to overturn the injunction. These two Chinese companies are dissatisfied with the temporary injunction and have argued to the federal circuit court that it is erroneous and has caused them millions of dollars in losses.

VPR Brands and a Chinese company are still involved in a legal dispute in Georgia. The American company has filed a lawsuit against a chain of vape shops called Vape Loft, accusing them of continuing to sell Chinese ELFBAR products despite the well-known ban in Florida. According to the lawsuit, these Chinese companies have joined the litigation by filing a counterclaim in June.

Similar to the situation in Florida, these Chinese companies are urging the federal court in Georgia to issue an injunction against VPR. They claim that VPR has taken advantage of their inability to sell Elfbar and instead has sold its own "low-quality" and "counterfeit" versions of e-cigarettes, imitating iMiracle's ELFBAR design, flavors, and colors.

Reference: 

[1] Vape Cos. Could Be 'Forced' Into Settlement In Elfbar Spat