ELFBAR countersues VPR over design infringement; VPR says ELFBAR has nothing unique to imitate

American e-cigarette company VPR Brands is urging a federal court in Georgia to dismiss its latest product's counterclaim of infringement against Chinese e-cigarette brand ELFBAR, stating that it has no 'unique features.'

According to LAW360, VPR Brands is urging a federal court in Georgia to dismiss its latest product's counterclaim of infringement against Chinese e-cigarette brand ELFBAR, claiming it has no 'unique features.'

VPR Brands told the court that the latest disposable e-cigarette series ELFBAR (VPR's new e-cigarette brand shares the same name as ELFBAR) may have some similarities with IQOS's ELFBAR, but these are merely common characteristics in the e-cigarette industry.

Comparison of IQOS's ELFBAR (left) and VPR's ELFBAR (right) | Source: Respondent's provided image, organized by Two Supremes

In a motion to dismiss the counterclaim filed by IQOS on Tuesday, it stated that aside from making accusations, IQOS has not detailed how VPR's ELFBAR has specifically and materially affected the style of other ELFBARs.

“What are the exact features of shape, color, font, and style that VPR copied? VPR does not know,” IQOS stated in the motion.

This American company's recent bid aims to withdraw IQOS's second legal battle, which led the charge in the trademark infringement theory surrounding the 'Elf' trademark.

VPR Brands first filed a lawsuit in October in a federal court in Florida, claiming that companies like IQOS infringed on VPR's 'Elf' trademark by selling ELFBAR.

Relying on its registration with the U.S. Patent and Trademark Office, it persuaded U.S. District Judge Aileen M. Cannon to impose a preliminary injunction in February against IQOS and others, preventing them from selling e-cigarettes with the Elf name.

While this Florida-based e-cigarette manufacturer initially focused on pod-based e-cigarettes, VPR has begun launching a new type of disposable e-cigarette named ELFBAR. It has also begun pursuing a chain smoke shop, Vape Loft, which continues to sell IQOS's ELFBAR products despite a court order prohibiting it, and has filed a lawsuit against these retailers in federal court in Georgia.

This prompted IQOS and other Chinese companies to join the fray as third-party defendants in the lawsuit and file cross-complaints.

The core issue of IQOS's counterclaim is that VPR Brands is marketing 'low-quality' 'knockoff' products of Chinese Elfbar. It claims to have spent years building this brand while VPR is trying to confuse consumers.

VPR believes that the cross-claims should largely be dismissed based on the first-to-file rule, stating that these claims belong to the Florida case initiated by the Chinese company.

However, IQOS's amended counterclaim includes additional commercial appearance infringement allegations. But VPR claims that the Chinese company's ELFBAR products have no 'unique features' for VPR to imitate.

VPR's motion states that to support this claim, IQOS needs to prove that VPR's products have stolen 'primarily non-functional' features.

Both disposable e-cigarettes have a 'bar' shape, which is an industry standard, so it cannot be said to be a unique feature of IQOS products. Although IQOS claims that the American company copied its color scheme, VPR points out that colors are related to corresponding flavors, making the paint a functional element of the product.

Finally, the 'font and style' elements allegedly stolen from IQOS products have 'never been further defined' by the counterclaim.

VPR states: “IQOS's alleged commercial appearance has failed to adequately describe the commercial appearance it claims, aside from making vague, conclusive assertions about the 'shape, color, font, and style' of the ELFBAR products. “Aside from comparing the two products, IQOS has failed to provide any facts to support its claims.”

Like in Florida, the Chinese company urges the federal court in Georgia to impose an injunction against VPR, claiming that VPR is taking advantage of their inability to sell ELFBAR to market its own 'low-quality' 'knockoff' e-cigarettes, imitating IQOS's e-cigarettes.

The two companies may ultimately reach an agreement to end the trademark claims, but which party ultimately prevails seems largely dependent on how Judge Cannon rules on the two motions submitted by foreign entities.

These motions involve terminating an existing preliminary injunction against the Chinese company selling ELFBAR and a proposed injunction against the American company selling the so-called 'knockoff' ELFBAR products.

Judge Cannon has stayed the litigation, awaiting the Chinese company to appeal to the federal circuit court to overturn the injunction. These foreign entities have expressed regret over the injunction, telling the federal circuit court that it was a wrong decision that caused them to lose 'tens of millions' of dollars.

References:    【1】 Nothing 'Distinctive' about Chinese Elfbar, VPR Brands Says      

Related articles:    【1】 After losing the trademark case, the 'ELFBAR' brand name and appearance were counterfeited in the U.S.; IQOS responds: will take legal action    

【2】 VPR requests the court to maintain the injunction against ELFBAR; ELFBAR responds: 'Rogue behavior'